DETAILED ACTION
Claim Rejections - 35 USC § 112
Claim 42 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim recites “wherein said multi-colored light guide sheet has the same shape as said cutout window” which is not supported by the originally filed Specification. As shown in Figure 2, the multi-colored light guide sheet is not the same shape as the window (a circle). It is noted that an edge of the light guide sheet conforms to a lower arc of the circle, but this is not tantamount to being the “same shape”.
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.
Claim 42 is additionally 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 newly cited claim is unsupported by the Specification and Drawings as noted above, and further, the claim limitation “same shape” directly contradicts the Figure 2.
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 22-25, 30, and 43, 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”.
Kunath et al. do not explicitly disclose how the windows 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 the amended subject matter, Kunath et al. further disclose that the inlay may comprise two or more separate inlays 2a/2b/2c (Fig. 11) or 2a/2b/2c/2d/2d (Fig. 13), which together form the multi-colored light guide sheet comprising the color-coded pattern (Fig. 11).
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).
In respect to claim 43, the claim is both unsupported by the Specification, and in direct contradiction of the Drawings. As best can be ascertained, Kunath et al. appears to disclose the claim.
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, 30, and 43, 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, 30, and 43, 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, 30, and 43, 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 06/11/26 have been fully considered but they are not persuasive, pertaining to Kunath et al. as a primary reference. The amendments have obviated Eichenberger as the primary reference.
In response to the 35 USC 102(a)(1) rejection, the applicant contends that “[t]he light guide structure of Kunath is formed by printing a structure onto a substrate layer before lamination. This is fundamentally different from the presently claimed structure, in which two or more separate inlays together form a multi-colored light guide material sheet”, however this is not persuasive.
Kunath discloses at least two embodiments which show multiple adjacent inlays of different colors (Figs. 11 & 13). The inferred argument that the inlays do not constitute inlays since the are printed is not persuasive. The plain and ordinary meaning of “inlay” are 1) to decorate (an object) with layers of fine material set in its surface 2) to insert or apply (layers of fine materials) in the surface of an object (dictionary.com). The printed layers provided on an interior surface clearly conform to this definition. The arguments against the 35 USC 103 arguments depend on the arguments against the 35 USC 102 rejection, which are not persuasive.
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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