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 without traverse of Group I, claims 1-7, 10-14, 16-22, 26-28, and 32-40 in the reply filed on December 13, 2024 is acknowledged.
Claims 41-47, 49-55, 57-59, 61, 66, 67, 69, and 71-76 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 13, 2024.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/21/2023, 04/18/2023, 11/25/2024 have been considered by the examiner.
On the information disclosure statement filed 03/21/2023, the foreign document JP “2011-23722” is lined through and has not been considered. As explained in the Applicant’s remarks filed with the corrective IDS submitted on 04/18/2023, the document number “2011-23722” on the 03/21/2023 IDS contained a typographical error that was intended to refer to JP “2011-123722”. The corrected document number was therefore considered on the IDS filed 04/18/2023.
The information disclosure statement filed 03/21/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. In the instant case, the Applicant has not provided a copy of the following NPL documents, along with an English translation and/or concise explanation of relevance, as required by 37 CFR 1.98(a)(3):
“International Search Report.”
“German Examination Report.”
Appropriate correction is required.
Claim Objections
Claims 6 and 7 are objected to because of the following informalities:
Regarding 6 and 7, it is suggested to amend the term “corrosion varnish layer” to --corrosion-protection varnish layer-- in order to align the language of the claim with the specification and to clarify the claim. Page 19 of the as-filed specification sets forth that a corrosion-protection varnish layer is applied between the magnetic varnish layer and the metal layer to serve as a barrier therebetween. Page 33, in reference to Fig. 2a, discloses that a corrosion-protection varnish layer (21) is arranged between the metal layer (13) and the magnetic varnish layer (14) to prevent direct contact of the metal layer with the magnetic varnish layer. For the purpose of applying prior art, the limitations of claims 6 and 7 will be interpreted in light of the specification to refer to a corrosion-protection varnish layer.
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 16-18, 26, 32, and 35 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.
Regarding claim 16, the limitation reciting “at least one replication layer is arranged between the first adhesion-promoter layer and/or the carrier layer on the upper side of the carrier layer and the metal layer” is indefinite because the term “the first adhesion-promoter layer” lacks antecedent basis in the claim.
Although claim 2 sets forth that the multilayer body has at least one first adhesion-promoter layer, claim 16 depends directly from claim 1 and does not include the limitations of claim 2. For the purpose of applying prior art, claim 16 will be interpreted as requiring that, in structure b), the multilayer body further comprises a first adhesion-promoter layer, wherein at least one replication layer is arranged on the upper side of the carrier layer and is arranged between the metal layer and at least one of the first adhesion-promoter layer and the carrier layer.
Regarding claims 17 and 18, the claims are rejected based on their dependency on claim 16.
Regarding claims 26 and 35, the limitations reciting “wherein the at least one color layer is arranged in the decoration” (claim 26) and “wherein the at least one magnetic varnish layer is applied in the decoration or over the whole surface” (claim 35) are indefinite because the term “the decoration” lacks antecedent basis in the claims.
In looking to the instant specification at pages 30 and 32, the magnetic varnish layer (14) is said to be applied in the decoration or over the whole surface, and the color layer (12) is said to be arranged in the decoration in Fig. 2a, where the at least one color layer is provided in a first area (41) and is not provided in a second area (42). Page 32 further discloses that the at least one magnetic varnish layer (14) may be provided in a partial area of the first area (41) and is not provided in a second area (42), such that the at least one magnetic varnish layer is concealed by the at least one color layer (12) and/or the at least one metal layer (13).
The instant specification does not provide any further clarification as to what is meant by the term “the decoration”. However, the limitation in claim 35 requiring that the at least one magnetic varnish layer is applied in the decoration or over the whole surface appears to intend to set forth that the at least one magnetic varnish layer is applied either as a discontinuous layer that is provided in some areas (e.g., applied in a first area) and is not provided in other areas (e.g., not applied in a second area), or as a continuous layer that is provided over the whole surface of the layer on which it is formed. Absent further clarification with respect to the term “the decoration”, for the purpose of applying prior art, the aforementioned limitations of claims 26 and 35 will be interpreted to mean that the at least one color layer is arranged discontinuously (i.e., only in some areas), and that the at least one magnetic varnish layer is applied either discontinuously or over the whole surface.
Regarding claim 32, the limitation reciting “wherein the at least one metal layer is arranged register-accurately or registration-accurately” is indefinite because the claim does not set forth what feature or layer the metal layer is arranged in register with. It is noted that original claim 32 was amended to remove the limitation reciting “in particular in exact register, relative to the at least one color layer”, where the phrase “relative to the at least one color layer” appears to have been deleted in error.
In looking to the instant specification at page 9, the terms “registered”, “register”, “registration-accurate”, “register-accurate”, “registration accuracy”, or “register accuracy” are said to refer to a positional accuracy of two or more layers relative to each other. On page 32 of the specification, in reference to Fig. 2a, the at least one metal layer (13) is said to be arranged register-accurately or registration-accurately, in particular in exact register, relative to the at least one color layer (12). The term “exact register” here is said to mean that there is no deviation between the color layer (12) and the metal layer (13), wherein both the color layer and the metal layer are provided only in the first area (41) and are not provided in the second area (42) (p. 32).
Based on the above disclosure, the limitation of claim 32 appears to intend to recite --wherein the at least one metal layer is arranged register-accurately or registration-accurately relative to the at least one color layer--, where the phrase “register-accurately or registration-accurately” is interpreted to mean that the at least one metal layer is arranged in register with the at least one color layer.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 10, 12, 14, 16-19, 21, 26-28, 32, 33, and 35-40 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Holmes (US 2016/0339733, cited on IDS).
Regarding claim 1, Holmes teaches a security element (160; multilayer body) comprising a relief structure (168a) formed in an embossing lacquer (168) on a substrate (169), where the relief structure is coated with a reflection enhancing layer (167; metal layer) such as metal ([0203], see Fig. 21 reproduced below). A transparent resist (164) and a light absorbing resist (164) are disposed onto the relief in accordance with the desired patterns to form the first and second areas (161, 165) respectively [0203]. A second substrate (169’) covers both first and second areas and is joined to the embossed assembly by means of an adhesive layer (169f) [0203]. On the other side of the substrate (169), a magnetic layer (169e; magnetic varnish layer) is provided in the form of indicia such as characters or an image [0203].
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Holmes teaches that the light absorbing resist is preferably visually dark in color (e.g., black ink), while the transparent resist is transparent although need not be colorless (e.g., may carry a colored tint) [0166]. Therefore, the light absorbing resist and transparent resist together correspond to the claimed color layer. As shown in Fig. 21, the security element (160) has a structure in which:
a) the light absorbing resist and transparent resist (162, 164; color layer), the reflection enhancing layer (167; metal layer), and the magnetic layer (169e; magnetic varnish layer) are all applied to the underside of the second substrate (169’; carrier layer); or
b) the light absorbing resist and transparent resist (162, 164; color layer) and the reflection enhancing layer (167; metal layer) are applied to the upper side of the substrate (169; carrier layer), while the magnetic layer (169e; magnetic varnish layer) is applied to the underside of the substrate (169).
Therefore, the security element (160) illustrated in Fig. 21 satisfies all of the limitations of claim 1 with respect to both structures a) and b). Holmes further teaches a similar embodiment of a security element (170), shown in Fig. 22, which is of substantially the same construction as the security element (160) shown Fig. 21 except that the magnetic feature (179e; magnetic varnish layer) is applied using a conventional magnetic ink, where a metallic ink layer (179f; metal layer) may be provided over the magnetic features to conceal the magnetic material from the rear of the security element ([0204], Fig. 22). The security element (170) illustrated in Fig. 22 therefore also satisfies all of the limitations of claim 1 with respect to both structures a) and b).
Regarding claim 2, Holmes teaches all of the limitations of claim 1 above and further teaches that the security elements (160, 170) each include a plurality of adhesive layers (169b, 169c, 169d, 169f, 179b, 179c, 179d; first adhesion-promoter layer) and further comprise a masking coat (166, 176; masking varnish layer) ([0203]-[0204], Figs. 21-22).
Regarding claim 3, Holmes teaches all of the limitations of claim 2 above. As shown in Fig. 22, when the second substrate (179’) is taken to correspond to the claimed carrier layer, the resist layers (172, 174; color layer), magnetic feature (179e; magnetic varnish layer), and metallic ink layer (179f; metal layer) are all applied to the underside of the carrier layer, thus meeting the limitations directed to structure a). As shown in Fig. 22, the embossing lacquer (178; replication layer) formed on the substrate (179’) is arranged between the resist layers (172, 174) and the metallic ink layer (179f).
Regarding claim 4, Holmes teaches all of the limitations of claim 3 above and further teaches that the relief structures can be replicated onto a substrate by thermal embossing, where a thermoformable layer typically 1 to 2 microns thick is embossed with the relief structure [0234]. Holmes therefore teaches that the replication layer has a layer thickness which falls squarely within the claimed range.
Regarding claim 5, Holmes teaches all of the limitations of claim 3 above. As noted above, Holmes teaches that the embossing lacquer (168, 178; replication layer) has a relief structure (168a, 178a) formed therein, where the relief structure may be a diffractive relief structure such as a diffraction grating (optically variable structures) ([0017], [0202]-[0204], Figs. 16, 21-22). Holmes teaches that the diffraction grating may have a pitch which varies from one sub-area to the next in order to deliver optical variance, where the appearance of the security element appears to change as the device is tilted or otherwise viewed from different directions ([0017], [0051]).
Regarding claim 10, Holmes teaches all of the limitations of claim 1 above and further teaches that, in structure a), the security elements (160, 170) include an adhesive layer (169d, 179d; second adhesion-promoter layer) arranged on the upper side of the second substrate (169’, 179’; carrier layer) (Figs. 21-22).
Regarding claims 12 and 14, Holmes teaches all of the limitations of claim 1 above and further teaches that, in structure a), the security elements (160, 170) each include at least one adhesive layer (169b, 169c, 169f, 179b, 179c; third adhesion-promoter layer) and a substrate (169, 179; further carrier layer) arranged on the underside of the second substrate (169’, 179’; carrier layer) (Figs. 21-22).
Regarding claim 16, Holmes teaches all of the limitations of claim 1 above and further teaches that, in structure b), the embossing lacquer (168, 178; replication layer) is arranged on the upper side of the substrate (179, 169; carrier layer) between the substrate (169, 179) and the reflection enhancing layer (167, 177; metal layer) (Figs. 21-22).
Regarding claim 17, Holmes teaches all of the limitations of claim 16 above and further teaches that the relief structures can be replicated onto a substrate by thermal embossing, where a thermoformable layer typically 1 to 2 microns thick is embossed with the relief structure [0234]. Holmes therefore teaches that the replication layer has a layer thickness which falls squarely within the claimed range.
Regarding claim 18, Holmes teaches all of the limitations of claim 16 above. As noted above, Holmes teaches that the embossing lacquer (168, 178; replication layer) has a relief structure (168a, 178a) formed therein, where the relief structure may be a diffractive relief structure such as a diffraction grating (optically variable structures) ([0017], [0202]-[0204], Figs. 16, 21-22). Holmes teaches that the diffraction grating may have a pitch which varies from one sub-area to the next in order to deliver optical variance, where the appearance of the security element appears to change as the device is tilted or otherwise viewed from different directions ([0017], [0051]).
Regarding claim 19, Holmes teaches all of the limitations of claim 1 above and further teaches that, in structure b), the security elements (160, 170) each include at least one adhesive layer (169c, 169d, 169f, 179c, 179d; second adhesion-promoter layer) arranged on the upper side of the substrate (169, 170; carrier layer) and an adhesive layer (169b, 179b; second adhesion-promoter layer) arranged on the underside of the substrate (169, 170) (Figs. 21-22).
Regarding claim 21, Holmes teaches all of the limitations of claim 1 above and further teaches that an adhesive layer (169b, 179b; first primer layer) is arranged on the underside of the substrate (169, 179; carrier layer) and that an adhesive layer (169d, 179d; second primer layer) is arranged on the upper side of the substrate (169, 179) such that the adhesive layers (169b, 169d, 179b, 179d) form the outer layers of the security elements (160, 170) ([0203], Figs. 21-22).
Regarding claims 26 and 27, Holmes teaches all of the limitations of claim 1 above. As noted above, Holmes teaches that the transparent resist (164) and light absorbing resist (162) are applied in desired patterns in first and second areas (161, 165) respectively [0203]. As shown in Figs. 21-22, the transparent resist and light absorbing resist (164, 174, 162, 172; color layer) are provided in first and second areas (161, 165, 171, 175; first area) and are not provided in a second area located between the first and second areas.
Regarding claims 28 and 32, Holmes teaches all of the limitations of claim 1 above and further teaches that the reflection enhancing layer (metal layer) may be formed in partial areas by removing parts of the reflection enhancing layer, for example, by etching [0061]. At least one or both of the transparent and light absorbing materials are preferably resist materials such that they protect the underlying reflection enhancing material from the etchant ([0061], [0167]). Holmes therefore teaches that the color layer formed of the transparent resist and light absorbing resist is designed as an etch resist for structuring the reflection enhancing layer. As shown in Figs. 21-22, since the transparent and light absorbing materials (color layer) serve as a resist to protect the reflection enhancing material layer (metal layer) from the etchant, the reflection enhancing layer is arranged in register with the transparent resist and light absorbing resist.
Regarding claim 33, Holmes teaches all of the limitations of claim 1 above and further teaches that the reflection enhancing layer (metal layer) may include gaps corresponding to negative indicia ([0193], [0203]). As shown in Figs. 21-22, the reflection enhancing layer (167) is provided in first and second areas (161, 165; first area) and is not provided in a second area located between the first and second areas.
Regarding claim 35, Holmes teaches all of the limitations of claim 1 above and further teaches that the magnetic feature (179e; magnetic varnish layer) may be applied as tramlines (discontinuously) along the two edges of the security element (170) ([0204], Fig. 22).
Regarding claim 36, Holmes teaches all of the limitations of claim 1 above and further teaches that the metallic ink layer (179f; metal layer) may be provided over the magnetic feature (179e; magnetic varnish layer) to conceal the magnetic material from the rear of the security element (170) [0204]. As shown in Fig. 22, the magnetic feature (179e) is arranged in register with the metallic ink layer (179f).
Regarding claim 37, Holmes teaches all of the limitations of claim 27 above and further teaches that the magnetic feature (179e; magnetic varnish layer) may be applied as tramlines along the two edges of the security element (170), where the presence of the magnetic material is concealed from an observer viewing the element from above by the reflection enhancing layer (177; metal layer) [0204]. As shown in Fig. 22, the magnetic feature (179e) is provided in a partial area of the first and second areas (171, 175; first area) and is not provided in the second area located between the first and second areas.
Regarding claims 38-40, Holmes teaches all of the limitations of claim 2 above. It is noted that the limitations in claims 38-40 directed to the at least one masking varnish layer are only considered to further limit the claimed multilayer body when the multilayer body includes at least one masking varnish layer. However, in claim 2, the at least one masking layer is recited as an optional component of the multilayer body which is not required when the multilayer body has at least one first adhesion-promoter layer. As explained above, Holmes teaches that the security elements (160, 170) each include a plurality of adhesive layers (169b, 169c, 169d, 169f, 179b, 179c, 179d; first adhesion-promoter layer) ([0203]-[0204], Figs 21-22), such that the limitation of claim 2 is satisfied without the presence of at least one masking varnish layer. The security element taught by Holmes satisfies all of the limitations required by claims 38-40 and thus anticipates the claimed invention.
Claims 1, 2, 6, 10, 12, 14, 21, 33, 35, 36, and 38-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoffmann et al. (DE 102006023866, cited on IDS, machine translation via EPO provided).
Regarding claim 1, Hoffmann et al. teaches a security element (2; multilayer body) comprising a carrier film (3; carrier layer), an opaque white layer (16; color layer), a metallic layer (7; metal layer), and a machine-readable layer (5; magnetic varnish layer) made of magnetic lacquer ([0008], [0037], [0067], see Fig. 11 reproduced below).
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It is noted that the terms “upper side” and “underside” recited in claim 1 are relative terms that depend on the orientation from which the multilayer body is viewed, and are interpreted as referring to the two opposing sides of the carrier layer as viewed from either orientation. The opaque white layer, metallic layer, and machine-readable layer in the security element taught by Hoffmann et al. are all arranged on the same side of the carrier film, thus satisfying structure a) wherein the color layer, metal layer, and magnetic varnish layer are all applied to the underside (i.e., the same side) of the carrier layer.
Regarding claim 2, Hoffmann et al. teaches all of the limitations of claim 1 above and further teaches that the security element (2) comprises an adhesion promoter layer (15a; first adhesion-promoter layer) ([0067], Fig. 11).
Regarding claim 6, Hoffmann et al. teaches all of the limitations of claim 1 above and further teaches that, in structure a), a lacquer layer (10; corrosion-protection varnish layer) is arranged between the metallic layer (7; metal layer) and the machine-readable layer (5; magnetic varnish layer) ([0063], Fig. 11).
Regarding claim 10, Hoffmann et al. teaches all of the limitations of claim 1 above and further teaches that, in structure a), an adhesion-promoter layer (15a; second adhesion-promoter layer) is arranged on the side (upper side) of the carrier film (3) opposite the side on which the opaque white layer (16), metallic layer (7), and machine-readable layer (5) are arranged ([0067], Fig. 11).
Regarding claims 12 and 14, Hoffmann et al. teaches all of the limitations of claim 1 above and further teaches that, in structure a), the security element (2) comprises an adhesion promoter layer (15b; third adhesion-promoter layer) and a plastic film (17; further carrier layer) each arranged on the same side (underside) of the carrier film (3) as the opaque white layer (16), the metallic layer (7), and the machine-readable layer (5) ([0067], Fig. 11).
Regarding claim 21, Hoffmann et al. teaches all of the limitations of claim 1 above and further teaches that the security element (2) comprises first and second heat seal lacquer layers (14a, 14b; first and second primer layers) arranged as the outer layers of the security element, such that a first heat seal lacquer layer (14b) is provided on the underside of the carrier film (3) and a second heat seal lacquer layer (14a) is provided on the upper side of the carrier film (Fig. 11).
Regarding claim 33, Hoffmann et al. teaches all of the limitations of claim 1 above and further teaches that the metallic layer (7; metal layer) is formed to have cutouts in the form of characters, patterns, or codes ([0035], Fig. 11), wherein the cutouts correspond to the claimed second area in which the metallic layer is not provided, while the areas in which the metallic layer is formed correspond to the claimed first area.
Regarding claim 35, Hoffmann et al. teaches all of the limitations of claim 1 above and further teaches that the machine-readable layer (5; magnetic varnish layer) is applied discontinuously over the surface of the primer layer (10), such that the machine-readable layer formed of functional ink contains free areas in which the functional ink is not formed ([0019], [0063], Fig. 11).
Regarding claim 36, Hoffmann et al. teaches all of the limitations of claim 1 above and further teaches that the machine-readable layer (5; magnetic varnish layer) is dimensioned such that it remains invisible when viewing the security element from the side of the metallic layer (7; metal layer) since it is completely covered by the portions of the metallic layer ([0063], Fig. 11). As shown in Fig. 11, the machine-readable layer is arranged in register with the metallic layer.
Regarding claims 38-40, Hoffmann et al. teaches all of the limitations of claim 2 above. It is noted that the limitations in claims 38-40 directed to the at least one masking varnish layer are only considered to further limit the claimed multilayer body when the multilayer body includes at least one masking varnish layer. However, in claim 2, the at least one masking layer is recited as an optional component of the multilayer body which is not required when the multilayer body has at least one first adhesion-promoter layer. As explained above, Hoffmann et al. teaches that the multilayer body has an adhesion promoter layer (15a; first adhesion-promoter layer) ([0067], Fig. 11), such that the limitation of claim 2 is satisfied without the presence of at least one masking varnish layer. The multilayer body taught by Hoffman et al. satisfies all of the limitations required by claims 38-40 and thus anticipates the claimed invention.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Holmes (US 2016/0339733, cited on IDS) as applied to claim 1 above, and further in view of Hoffmann et al. (DE 102006023866, cited on IDS, machine translation via EPO provided).
Regarding claim 6, Holmes teaches all of the limitations of claim 1 above. Although the security element (170) shown in Fig. 22 of Holmes has a metallic ink layer (179f; metal layer) formed over the back surface of the magnetic layer (179e; magnetic varnish layer) ([0204]), Holmes does not expressly teach a corrosion-protection varnish layer arranged between the metallic ink layer and the magnetic layer.
However, in the analogous art of security elements, Hoffmann et al. teaches security elements for security papers or valuable documents, comprising a carrier film (3) printed with a metallic effect layer (4), a machine-readable layer (5; magnetic varnish layer), for example made of magnetic lacquer, printed on top of the metallic effect layer, and a metallic layer (7; metal layer) deposited over the machine-readable layer ([0001], [0060], Figs. 3-5). Hoffman et al. teaches that metallic materials are susceptible to corrosion in the presence of moisture, and that a layer of protective lacquer (6; corrosion-protection varnish layer) may be formed between the machine-readable layer (5) and the metallic layer (7) in order to prevent the occurrence of corrosion ([0009], [0023], [0060]).
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 security element of Holmes by applying a protective lacquer layer between the metallic ink layer and the magnetic layer, as taught by Hoffman et al., in order to prevent the occurrence of corrosion at the interface between the metallic and magnetic layers.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Holmes (US 2016/0339733, cited on IDS) in view of Hoffmann et al. (DE 102006023866, cited on IDS, machine translation via EPO provided) as applied to claim 6 above, and further in view of Wild et al. (US 2009/0308932, cited on IDS).
Regarding claim 7, Holmes in view of Hoffmann et al. teaches all of the limitations of claim 6 above. Although Hoffmann et al. teaches that a protective lacquer layer (6; corrosion-prevention varnish layer) can be provided between the metallic layer (7) and the machine-readable magnetic layer (5) to prevent the occurrence of corrosion ([0023], [0060]), the combination of references is silent to a thickness of the corrosion-protection varnish layer.
However, in the analogous art of security elements, Wild et al. teaches a credit card (1) having a security element (2) arranged on a card-like carrier body (3), wherein the security element can be applied to the plastic body as part of the transfer layer (62) of a transfer film (6) ([0029], [0038], [0044], Figs. 1, 6). Wild et al. teaches that the transfer film comprises a temporary carrier film (61), a release layer (63), and the transfer layer (62) having a protective varnish layer (64), a replication varnish layer (65), a metal layer (66), an adhesion promoter layer (67), a barrier layer (68), a magnetic layer (69), and an adhesive layer (70) ([0044], Fig. 6). Wild et al. teaches that the barrier layer is preferably provided between the magnetic layer and the metal layer to prevent any action of the magnetic pigments present in the magnetic layer on the metal layer and to insulate the metal layer electrically with respect to the magnetic layer, where the barrier layer has a thickness of 0.5 to 5 µm ([0002], [0019], [0036]), which falls squarely within the range of claim 7. 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).
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 security element of Holmes in view of Hoffmann et al. by setting a thickness of the corrosion-prevention varnish layer within the claimed range, as taught by Wild et al., in order to provide the necessary barrier properties to prevent the metal and magnetic layers from adversely influencing one another.
Claims 11, 13, 20, 22 are rejected under 35 U.S.C. 103 as being unpatentable over Holmes (US 2016/0339733, cited on IDS) as applied to claims 10, 12, 19, and 21 above, and further in view of Wild et al. (US 2009/0308932, cited on IDS).
Regarding claims 11, 13, 20, and 22, Holmes teaches all of the limitations of claims 10, 12, 19, and 21. As explained above with respect to claims 10, 12, 19, and 21, one or more of the adhesive layers (169b, 169d, 179b, 179d) may be taken to correspond to the second and third adhesion-promoter layers and first and second primer layers. Although Holmes teaches that the security element may be incorporated into a security document, such that the adhesive layers located on the outer surfaces of the security element are used to affix the security element to the security document ([0142], [0149], Fig. 1), Holmes differs from the claimed invention in that the reference does not expressly teach a thickness of the adhesive layers.
However, in the analogous art of security elements, Wild et al. teaches a credit card (1) having a security element (2) arranged on a card-like carrier body (3), wherein the security element can be applied to the plastic body as part of the transfer layer (62) of a transfer film (6) ([0029], [0038], [0044], Figs. 1, 6). Wild et al. teaches that the transfer film comprises a temporary carrier film (61), a release layer (63), and the transfer layer (62) having a protective varnish layer (64), a replication varnish layer (65), a metal layer (66), an adhesion promoter layer (67), a barrier layer (68), a magnetic layer (69), and an adhesive layer (70) ([0044], Fig. 6). Wild et al. teaches that the adhesive layer is not always necessary but can be included depending on the composition of the material of the carrier body to which the transfer layer is applied, where the adhesive layer has a thickness of 0.3 to 1.2 µm ([0045], [0055]), which falls squarely within the ranges of clams 11, 13, 20, and 22. 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).
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 security element of Holmes by setting a thickness of the adhesive within the claimed range, as taught by Wild et al., in order to provide the necessary adhesive strength to enable the adhesive layers to be used for incorporating the security element into a security document.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Holmes (US 2016/0339733, cited on IDS) as applied to claim 1, and further in view of Ito (JP 2012-086473, machine translation via EPO provided).
Regarding claim 34, Holmes teaches all of the limitations of claim 1 above but does not expressly teach a thickness of the magnetic layer (169e, 179e; magnetic varnish layer).
However, in the analogous art of security elements, Ito teaches a security thread (1) comprising a transparent substrate (2), a metallic luster thin film layer (3), a magnetic layer (4), and a UV fluorescent light emitting layer (5) ([0012]-[0014], Fig. 1). Ito teaches that the thickness of the magnetic layer can be set to 0.5 µm to 20 µm, preferably 1 µm to 5 µm, provided that any of these thicknesses can provide a magnetic output that can be read by a magnetic reader [0014].
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 security element of Holmes by setting a thickness of the magnetic varnish layer within the claimed range, as taught by Ito, in order to ensure that the magnetic layer can provide a magnetic output that can be detected by a magnetic reader.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Endres et al. (US 2013/0113201) teaches a security thread (3) comprising a carrier foil (5), an embossed lacquer layer (6), a metallic reflection layer (7) coated on the embossed surface of the lacquer layer, a primer coating (8), and a heat seal lacquer layer (9) used to produce a reliable and durable bond with a polycarbonate layer of a plastic card into which the security thread is laminated ([0033]-[0036], Figs. 1-6).
Tompkin et al. (US 2010/0001508) teaches a security element (2) embedded in a carrier substrate (10) of a security document, where the security element comprises a replication lacquer layer (8) including refractive microlenses (8a), a film carrier (7), a patterned metal film (2a), and transparent adhesive layers (13a, 13b) provided on each side of the security element for the purpose of gluing the security element to the carrier substrate ([0132], Figs. 7a-7c).
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/Rebecca L Grusby/Examiner, Art Unit 1785