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 22, 24, and 30, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eichenberger (US 2012/0299287).
In respect to claim 22, Eichenberger disclose a pre-form* for a security document comprising at least a bottom layer 6b, a central layer, and a top layer 6a; wherein said central layer comprising an insert inlay 7; wherein said inlay 7 comprises a light guide material that is configured to interact with input light through at least one window 8a which is provided in the upper surface of the top layer (extending completely through) and exiting so that the color-pattern is modified by interaction between a predetermined light and said light guide material (0033-0039; Figs 1-2). Although this embodiment shows that the light is outcoupled in a color-coded pattern (e.g. a diffraction grating with a variety of colors) at window 8b, the color-coded pattern can alternately be provided by a coupling at the edge of the document, and thus form a color-coded pattern along a direction between said first and second corner (0067). *Note: a “pre-form” does not delineate any particular structure, but rather infers an intended manufacturing step i.e. the device is intended to be combined with another article in the future. Eichenberger disclose a further embodiment wherein the out-coupler (which forms the exiting light) may be formed from fluorescent dyes formed within the waveguide, which “glow brightly” with in response to input light (0045); Furthermore, the fluorescent dyes can be provided as at least two different colors, which may be arranged at distinct locations, thus forming a “predefined sequence of colors and/or predefined brightness”.
In respect to the amended subject matter, Eichenberger does not explicitly disclose how the windows 10a/10b are formed as “cutouts” however this merely suggests how the windows were made (a cutting process). However, although product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, the paper layers 6a/6b contain an absence of material which form the windows 10a/10b. The windows could have been formed via a cutting process, thus the claim does not differentiate from the prior art.
In respect to claim 24, Eichenberger discloses that the fluorescent dyes having different colors may be excited with different wavelengths, thus producing different colors at a “predefined input light” (ultraviolet light) than exposure to visible ambient light.
In respect to claim 30, Eichenberger discloses that the insert inlay has the thickness of the central layer (plastic layer constituting the waveguide).
Claims 22-25 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kunath et al. (WO 2010/006805) (See NPL for English Translation).
In respect to claim 22, Kunath et al. disclose a pre-form* for a security document comprising at least a bottom layer 10, a central layer 1, and a top layer 8; wherein said central layer 1 comprising one or more insert inlays 4 between a first and second corner of the central layer 1 to form a color-coded pattern along a direction between said first and second corner (at “coupling areas” (light exits) 6); wherein said one or more inlays comprise a light guide material that is configured to interact with input light 22 through at least one window (input couple 6, right hand side) and exiting so that the color-pattern is modified by interaction between a predetermined light 22 and said light guide material (0063-0067; Figs 1-2, 4). *Note: a “pre-form” does not delineate any particular structure, but rather infers an intended manufacturing step i.e. the device is intended to be combined with another article in the future. Kunath et al. disclose that opaque layers may be provided to the top of the document (0029). Although not explicitly disclosed as “windows”, due to the requirement of the in-coupling of light into the waveguide, for the invention to operate, it is inferred that “coupling areas” are left without opaque layers, thus forming “windows”.
In respect to the amended subject matter, Eichenberger does not explicitly disclose how the windows 10a/10b are formed as “cutouts” however this merely suggests how the windows were made (a cutting process). However, although product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, the paper layers 6a/6b contain an absence of material which form the windows 10a/10b. The windows could have been formed via a cutting process, thus the claim does not differentiate from the prior art.
In respect to claim 23, Kunath et al. disclose that the light guide material is configured to interact with the visible ambient light in such a way that the brightness of the color-coded pattern is enhanced: “the amount of light directed to the coupling areas 6 is considerably larger, so that they can be perceived as significantly brighter” (0067).
In respect to claim 24, Kunath et al. disclose that the light guide can interact with a single or multiple wavelengths of light (0023). Furthermore, although only an ambient light source (multiple wavelengths) is explicit, 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 colored light guide material disclosed by Kunath is capable of altering an output color-pattern different from a predetermined wavelength due to the colorization of the material (in the same fashion as its colorization of multiple-wavelength ambient light).
In respect to claim 25, Kunath et al. disclose that the light guide material may comprise optical fibers (0021 & 0026). It is noted that any amended particular structural design beyond its general mention in the Specification, would be restricted (Group D; Fig. 3D).
In respect to claim 30, Kunath et al. disclose that the one or more insert inlays have a thickness smaller than the total thickness of the central layer 1 (Fig. 2).
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 22-25 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Kunath et al. (WO 2010/006805) (See NPL for English Translation) in view of Eichenberger (US 2012/0299287).
Kunath et al. discloses what one of ordinary skill in the art would infer to be “windows”, however, Eichenberger further teach a very similar invention wherein opaque print or layers are added to the waveguide layer, and that windows may be formed via omission of opaque regions in areas of couplers (See rejection above). It would have been obvious to provide the opaque print/layers at the upper surface of the top layer taught in Kunath et al. with windows in view of Eichenberger to allow light to easily couple into the waveguide (0009-0010).
Claims 22-25 and 30 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Kunath et al. (WO 2010/006805) (See NPL for English Translation) in view of Farber (US 6,036,230).
Kunath et al. disclose the claimed invention for the reasons stated above, however, Farber teaches a similar pre-form for a security document comprising similar window in paper and with inlay layers (Figs. 1-2b & 5); the window can be formed as a “cut-out” (Col. 2, 10-16). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the present application to provide the window taught in Kunath et al. via a cutout method in view of Farber. 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, naming the removal “cutting” of material to remove material from an area as desired to form windows in Kunath.
Claims 22-25 and 30 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Kunath et al. (WO 2010/006805) (See NPL for English Translation) in view of Eichenberger (US 2012/0299287) and Farber (US 6,036,230).
Kunath et al. and Eichenberger teach the claimed invention for the reasons stated above, however, Farber teaches a similar pre-form for a security document comprising similar window in paper and with inlay layers (Figs. 1-2b & 5); the window can be formed as a “cut-out” (Col. 2, 10-16). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the present application to provide the window taught in Kunath et al. and Eichenberger via a cutout method in view of Farber. 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, naming the removal “cutting” of material to remove material from an area as desired to form windows in Kunath.
Response to Arguments
Applicant's arguments filed 01/27/26 have been fully considered but they are not persuasive.
In respect to the 35 USC 102(a)(1) rejection, the applicant contends that Eichenberger fails to disclose that the window is a “cut-out” however, this is merely a product-by-process limitation which does not result in any differing structure from the resultant claimed product (the resultant claimed product of Eichenberger could have been formed via this method). Furthermore, Farber was added as a reference showing a similar document wherein windows in a security paper were formed from as “cut-outs” wherein the removal of material to form recess “windows” is exceptionally known in the art (the only alternative being selective patterned application of material).
In respect to the 35 USC 103 rejections, the applicant relies on the alleged deficiency in Kunath et al., which is not persuasive for the reasons detailed above.
In regards to the interview, the applicant states that “during the interview, Applicant’s representative explained that [the] feature of the “cut-out window” clearly distinguishes over Eichenberger, to which the Examiner appeared to be in agreement [emphasis added]” and restates a similar statement in regards to Kunath et al. Contrary to the assertion, the Examiner, at most, only stated that the prior art of record did not appear to explicitly disclose a cut-out. This is immaterial however, as detailed above. Furthermore, Farber teaches this well-known method of forming windows in paper of similar security documents.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637