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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5 in the reply filed on 10/31/25 is acknowledged. Applicants' Remarks re the Office's Restriction have been carefully reviewed but have not found to be persuasive. A single search for the two (2) inventions would not be made by a single search. And moreover, if the two (2) inventions were searched concurrently the search would be burdensome. Since, inventions of Groups I-Ill each have a separate status in the art and clearly have a separate field of search which would be non-coextensive while creating a burden for each search of each invention, see MPEP § 806.05(c) and § 806.05(d). Therefore, the previous restriction requirement mailed on 8/19/25 is retained for same reason provided from record. Furthermore, Applicant(s) contends that a) Groups I and II involve at least one common special technical feature; b) Groups I and II are directed to a product and a process specially adapted for the manufacture of said product (see under the “Remarks”, page 1, ¶ [004] and page 3, about ¶ [003]. This has been carefully noted and not found to be persuasive because Groups I-II directed to a separate invention such as method versus product and the product claims 6/13 is clearly in improper dependent claim format, therefore it is suggested to rewrite claim 6/13 in standard independent claim format including all of the limitations of claim 1 instead of merely referring to claim 1. Since unelected invention II is a product and such product can be made regardless to whatever method. (It should be noted that a "product by process" claim is directed to the product per se, no matter how such a product was made. It has been well established by the courts that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" form or not). Therefore, the requirement is still deemed proper and is therefore made FINAL.
Claims 6-13 and newly added product claims 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/31/25. Note: Applicant should be aware that a “product by process” claim is directed to the product per se, no matter how such a product was made. It has been well established by the courts that it is the patentability of the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” form or not.
Applicant(s) is in favor reserves the rights for further prosecution of unelected claims 6-19 in divisional applications or continuation applications.
An OA on the merits of claims 1-5 as follows:
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.
The abstract of the disclosure is objected to because throughout the abstract, the abstract recites the terms "comprising or comprises", which is improper language for the abstract. The applicant should replace the terms with the term --has or having--, to provide the abstract with proper language. Correction is required. See MPEP § 608.01(b).
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 claimed “a terminal block” (claim 1, line 19) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The following method drawing is suggested:
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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
Claims 1-5 are objected to because of the following informalities:
“producing through holes” (claim 1, line 4) should be updated to: --"forming a plurality of through holes “--.
Alternative terms such as “or decorative zones” should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-5 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.
The claims as present format are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
many terms or phrases is/are unclear and confusing the following are examples:
The phrases:
”delimiting by etching, a set of functional metal zones comprising a central zone forming an electrical ground, and a set of electrical contacts separated from one another and separated from the electrical ground by non-metallized zones letting the dielectric film show and, a set of non-functional or decorative zones;”(claim 1, lines 7-11) is awkwardly worded and confusing in that it is not known exactly what being etching in order to form the structures as noted above.
The following is suggested:
--determining and forming a set of functional metal zones having a central zone on the at least one metal layer that configured to form an electrical ground, and a set of electrical contacts separated from one another by etching; and separating from the electrical ground by non-metallized zones to expose the dielectric film, and the determining and forming further includes etching to form a set of non-functional.“--
“simultaneously producing, by an etching operation a debossed first security pattern obtained by removing material from one of the functional metal zones and a second security pattern embossed with respect to the dielectric film and obtained by removing material from a zone located outside the functional metal zones forming the electrical contacts of a terminal block“ (claim 1, lines 15-19)vague and in definite in that it is not known as to exactly what process steps applicant intends to claim above.
The following format is suggested:
--"simultaneously forming a debossed first security pattern obtained comprises removing material from the set of the functional metal zones by etching, and simultaneously forming a second security pattern embossed with respect to the dielectric film comprises removing material from a zone located outside the set of the functional metal zones to form electrical contacts for a terminal block by etching.”--
whether or not “a terminal block “(claim 1, line 19) is part of the claimed” security patterns on an electronic module”.
“is produced” (claims 2-3, line 2 respectively) is not positively method limitation. The use of: (e.g., "forming the first security in the central zone configured to be the electrical ground”) is suggested.
Similar to the above applied to claim 3.
“is obtained”(claim 4, line 2) is not positively method limitation (see suggest below)
(e.g., photochemical etching locally removing the at least one metal layer to contour the second security pattern and to include an embossed on the dielectric film outside the functional metal zones).
“further comprising a complementary step of electrolytically depositing at least one additional silver, gold, nickel, or palladium metal layer.” (claim 5, lines 1-3) awkwardly worded should be changed to: --(e.g., --“wherein the depositing at least one metal layer further comprises depositing an additional metal layer which is chosen from one of silver, gold, nickel, or palladium) is suggested.
The above are examples of inconsistencies and problematic issues noticed by the Examiner. Applicant is respectfully asked to review the claims for any deficiency that may still be present.
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.
Claim(s) 1-5 as best understood is/are rejected under 35 U.S.C. 103 as being unpatentable over Vogt (US 9167691B2) in view of Merlin et al (US 5552574).
Vogt discloses the claimed method for producing security patterns on an electronic module for a security document, comprising:
supplying a dielectric film 1;
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producing through holes 11-14 in the dielectric film 1;
depositing at least one metal layer on an upper side and a lower side of the dielectric film, leaving the through holes open (see Fig. 1 as reproduced above).
The Vogt is in silent regarding to limitations of “delimiting by etching, a set of functional metal zones comprising a central zone forming an electrical ground, and a set of electrical contacts separated from one another and separated from the electrical ground by non-metallized zones letting the dielectric film show and, a set of non-functional or decorative zones; and simultaneously producing, by an etching operation a debossed first security pattern obtained by removing material from the set of the functional metal zones- and a second security pattern embossed with respect to the dielectric film and obtained by removing material from a zone located outside the functional metal zones forming the electrical contacts of a terminal block”. However, delimiting by etching process and etching operation to form the set of non-functional or decorative zones is welly known in the art in fact the Merlin et al discloses such process in light of the discussion in col. 2, lines 12-23. Therefore, it would have been obvious to one of an ordinary skill in the art at the effective filing date of the invention to employ the Merlin’s teaching as noted above onto the invention of Vogt for various known befit included that as recited above. The motivation for the combination can be obtained from either reference since both references is in same endeavor field of invention.
Noted that due to the 35 USC 112(b) issues noted above, the examiner not be able to make a meaningful prior art rejection at this time for claims 2-5, because the patentability determination of these claims cannot be made at this time due to the ambiguity in the claim language. Upon the resolution of the 35 USC 112(b) issues, the examiner may apply prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can normally be reached M-TH ~5:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MINH N TRINH/Primary Examiner, Art Unit 3729
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