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 .
Note
Applicant’s response filed on 07/22/2026 has been fully considered. Claims 1, 9 and 21 are amended, claims 8 and 12-16 are cancelled and claims 1-7, 9-11 and 17-21 are pending.
Previous formal rejection under 35 U.S.C. §112 has been withdrawn in view of Applicant’s amendment.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 9-11, 17, 18 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-9, 11, 13, 14 and 23 of copending Application No. 18/028,970. Although the claims at issue are not identical, they are not patentably distinct from each other because current claim 1 corresponds to claims 1 and 3 of ‘970 where a polymer substrate for producing polymer papers of value or polymer security papers, the polymer substrate comprising: a polymer carrier layer; at least one security element applied at least one of onto and into the polymer carrier layer; and a primer applied onto at least one of a first substrate side of the polymer substrate and a second substrate side of the polymer substrate at least in some sections; wherein the primer covers at least one of the at least one security element and the polymer carrier layer at least in some sections, wherein regions of the at least one security element covered by the primer are not as well visible as at least one of (i) regions of the at least one security element not covered by the primer and (ii) regions of the polymer carrier layer not covered by the primer.
Current claim 2 corresponds to claim 4 of ‘970 where the regions of the at least one security element covered by the primer are at least one of: not visible from a top view and are visible when looking through; and better visible when looking through than from a top view. Current claim 3 corresponds to claim 5 of ‘970 where the polymer substrate further comprises a cover layer, wherein: at least one of the at least one security element, the polymer carrier layer, and the primer are covered by the cover layer at least in some sections; and regions of the at least one security element covered by the cover layer are not as well visible as at least one of (i) regions of the at least one security element not covered by the cover layer, (ii) regions of the polymer carrier layer not covered by the cover layer, and (iii) regions of the primer not covered by the cover layer. Current claim 4 corresponds to claim 6 of ‘970 where the primer is applied via a printing method. Current claim 5 corresponds to claim 7 of ‘970 where the primer is printable. Current claim 6 corresponds to claim 8 of ‘970 where the primer fully covers at least one of a surface of the polymer carrier layer and a surface of the at least one security element. Current claim 7 corresponds to claim 9 of ‘970 where the primer partially covers at least one of the polymer carrier layer and the at least one security element.
Current claim 9 corresponds to claim 11 of ‘970 where the polymer carrier layer is composed of plastic. Current claim 10 corresponds to claim 13 of ‘970 where the primer has a thickness of 1-50 μm. Current claim 11 corresponds to claim 14 of ‘970 where the at least one security element includes at least one security feature; and the at least one security feature includes at least one of: an optically variable feature; a feature that is optically discernible at least one of in transmission and upon reflection; a machine-readable features; a feature readable via a substance; and a feature that at least one of absorbs and re-emits electromagnetic waves. Current claim 17 corresponds to claim 23 of ‘970 where a polymer paper of value or a polymer security paper, comprising the polymer substrate according to claim 1.
Current claim 18 corresponds to claim 5 of ‘970 where the polymer substrate further comprises a cover layer, wherein: at least one of the at least one security element, the polymer carrier layer, and the primer are covered by the cover layer at least in some sections; and regions of the at least one security element covered by the cover layer are not as well visible as at least one of (i) regions of the at least one security element not covered by the cover layer, (ii) regions of the polymer carrier layer not covered by the cover layer, and (iii) regions of the primer not covered by the cover layer. Current claim 21 corresponds to claims 1 and 3 of ‘970 where a polymer substrate comprising: a polymer carrier layer; at least one security element applied relative to the polymer carrier layer; and a primer applied onto at least one side of the polymer substrate; wherein at least one of: the primer is arranged between the polymer carrier layer and the at least one security element; and/or the primer covers at least one security element.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Double Patenting
Applicant has indicated a terminal disclaimer will be submitted upon allowance.
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.
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herslow (US 2009/0169776 A1).
Claim 21: Herslow teaches a composite card (abstract) comprising, among other layers, a PVC laminating film 29b, a metal layer 22 and a primer 23a in the order thereof, wherein the metal layer 22 is embossed and includes patterns 401 (Fig. 4 and [0052]). The composite card meets the claimed polymer substrate, the PVC laminating film 29b meets the claimed polymer carrier layer, the metal layer 22 meets the claimed security element and the primer 23a meets the claimed primer covering the claimed security. Herslow teaches the primer 23a is a clear layer [0042]. Herslow teaches the metal layer 22 can be made of aluminum [0032], and it is well established that the natural color of aluminum is silver.
Since the surface of the primer 23a adjacent to the embossed metal layer 22 is irregular and the primer 23a is clear, the primer 23a would inherently possess the claimed diffusely scattering property.
Since the primer 23a is clear and the adjacent layer is aluminum metal layer 22 with silver color, the primer 23a would inherently create the claimed white color impression.
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.
Claims 1-7, 9-11 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Herslow (US 2009/0169776 A1).
Claim 1: Herslow teaches a composite card (abstract) comprising, among other layers, a PVC laminating film 29b, a metal layer 22 and a primer 23a in the order thereof, wherein the metal layer 22 is embossed and includes patterns 401 (Fig. 4 and [0052]). The composite card meets the claimed polymer substrate, the PVC laminating film 29b meets the claimed polymer carrier layer, the metal layer 22 meets the claimed security element and the primer 23a meets the claimed primer covering the claimed security. Herslow teaches the primer 23a is a clear layer [0042]. Herslow teaches the metal layer 22 can be made of aluminum [0032], and it is well established that the natural color of aluminum is silver.
Since the surface of the primer 23a adjacent to the embossed metal layer 22 is irregular and the primer 23a is clear, the primer 23a would inherently possess the claimed diffusely scattering property.
Since the primer 23a is clear and the adjacent layer is aluminum metal layer 22 with silver color, the primer 23a would inherently create the claimed white color impression.
Herslow teaches the primer 23a is a clear coating (Table 1) but does not expressly teach that the clear primer 23a enhances visibility of the metal layer 22 and/or visibility of the PVC laminating film 29b; therefore, at least parts of the metal layer 22 or the PVC laminating film 29b would not be well visible.
Claim 2: Herslow teaches the composite card may be viewed by applying a light source such as a flashlight in direct contact with one side of the card and viewing the light pattern on the other side [0061].
Claim 3: Herslow teaches the composite card further comprises a PVC laminating film 29a (Fig. 4 and [0052]).
Claim 4: The process by which the primer is applied is not dispositive of the issue of the patentability of the instant article claim.
Claim 5: The claimed “primer is printable” is interpreted as the primer is capable of being printed. It has been held that an element is “capable” of “performing” a function is not a dispositive limitation but only requires the ability to so perform; therefore, the “primer is printable” does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
Claim 6: Herslow teaches the composite card (abstract) comprising, among other layers, the PVC laminating film 29b, the metal layer 22 and the primer 23a in the order thereof, wherein the metal layer 22 is embossed and includes patterns 401 (Fig. 4 and [0052]). The primer 23a over the metal layer 22 without the section including the patterns 401 meets the claimed primer fully covers a surface of the at least one security element.
Claim 7: Herslow teaches the composite card (abstract) comprising, among other layers, the PVC laminating film 29b, the metal layer 22 and the primer 23a in the order thereof, wherein the metal layer 22 is embossed and includes patterns 401 (Fig. 4 and [0052]). The primer 23a over the metal layer 22 with the section including the patterns 401 meets the claimed primer partially covers the claimed polymer carrier layer.
Claim 9: Herslow teaches the PVC laminating film 29b is formed of PVC (Fig. 4 and [0048]) which is a plastic material.
Claim 10: Herslow teaches the thickness of the primer layer 23b is 0.0001-0.0003 inches (2.54-7.62 µm) [0035] which overlaps with the claimed 1-50 µm.
Claim 11: Herslow teaches the composite card (abstract) comprising, among other layers, the PVC laminating film 29b, the metal layer 22 and the primer 23a in the order thereof, wherein the metal layer 22 is embossed and includes patterns 401 (Fig. 4 and [0052]). Herslow further teaches the composite card in which the image/hologram (metal layer 22) formed on the composite card is reflected (i.e., is visible) while also enabling a viewer to "see-through" the image [0040]. The patterns 401 meets the claimed security feature and the claimed feature that is optically discernible at least one of in transmission and upon reflection.
Claim 17: Herslow teaches the composite card includes a security layer formed at the center, or core layer, of the card [0006].
Claim 18: Herslow teaches the composite card further comprises a PVC laminating film 29a (Fig. 4 and [0052]).
Claim 19: Herslow teaches the PVC laminate film 29b is clear [0048].
Response to Amendment
Applicant’s argument is based on that Herslow fails to teach the primer is diffusely scattering and creates a white color impression in natural or also artificial light incidence. This argument is not persuasive for the following reasons. Herslow teaches the primer 23a is a clear layer [0042]. Herslow further teaches the metal layer 22 can be made of aluminum [0032], and it is well established that the natural color of aluminum is silver.
Since the surface of the primer 23a adjacent to the embossed metal layer 22 is irregular and the primer 23a is clear, the primer 23a would inherently possess the claimed diffusely scattering property.
Since the primer 23a is clear and the adjacent layer is aluminum metal layer 22 with silver color, the primer 23a would inherently create the claimed white color impression.
For the above reasons claims 1-7, 9-11, 17-19 and 21 stand rejected.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETELHEM SHEWAREGED whose telephone number is (571)272-1529. The examiner can normally be reached Monday -Friday 7am-4:30pm.
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BS
September 27, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
