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 .
Response to Arguments
Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive.
Applicant has amended the claims to specify what must be present in the security feature as well as requiring that the security feature remains permanently on the polymer substrate.
Applicant has requested that the Examiner provides evidence to support any taken Official Notice as part of the rejection. The Examiner had not taken Official Notice in the previous office action, but will be sure to articulate any implicit teachings from the utilized references.
Applicant further argues that the Hoffmann reference does not teach or suggest, inter alia, wherein the at least one security feature includes at least one of an embossed layer, a partially metallized layer, a fluorescent layer, a printed layer, a magnetic encoding, and an optically variable feature. Nor does Hoffmann teach or suggest, removing the detachable carrier film so that the security feature permanently remains on the polymer substrate.
Applicant further argues that the amended claims require a direct transfer of a security feature onto a preexisting polymer banknote substrate surface.
The Examiner respectfully disagrees.
The claims require a polymer substrate have a first and second side, where a security element with a transfer film is applied to one of the first or second side and then removing the detachable carrier film so that the security feature remains on the polymer substrate.
There is no requirements for a banknote to be utilized. AS long as a security feature is permanently transferred to one of the two sides of a polymer substrate, the claims are met.
Applicant further argues that the Hofmann reference teaches adding the security film to a laminating film that is internal to the laminated films to make the product.
The Examiner agrees. This directly reads on the claims of treating a substrate (a film) with a first and second side, and that has a security element placed upon one of the sides. This is all that is required form the claims, and it is directly taught.
The arguments that the inner film is not a side of the polymer banknote that already exists is a moot point as none of those limitations are present in the claims. It is noted that the claims do not require that the first and second side are the outer sides of the final product, or that they are a preexisting product that is modified. Therefore the act of treating an internal laminated film reads on the claims as long as the film has two sides (which is an inherent property to films).
Applicant argues that the film of the reference cannot be the substrate of the claimed invention because the Hofmann film does not teach that a banknote substrate that is an internal laminate. This is discussed above where the limitations of being a banknote or external sides are not claimed limitations.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-9, 11-12 and 14-20 are rejected under 35 U.S.C. 102a1 as being anticipated by Hoffmann et al, wo 2019/224159 (already of record).
Regarding claim 1, Hoffmann teaches a method for producing polymer papers of value or polymer security paper (see abstract), comprising:
providing a polymer substrate (laminating film, item 21 made from polycarbonate (see abstract) of at least one polymer (polycarbonate, see abstract), the polymer substrate having a first substrate side and a second substrate side (see figures);
providing a security element (top of description section) including a transfer film the transfer film including at least one security feature (description section first 4 paragraphs) and a detachable carrier film (item 41, see abstract) wherein the at least one security feature includes a printed layer (see abstract “printing at least one of the decorate layer”);
applying the transfer film at least one of onto the first substrate side and onto the
second substrate side, at least in some sections (see figures);
connecting the at least one security feature to at least one of the first substrate side and the second substrate side (see figures and "preparation of a laminate body or security document solved section); and removing the detachable carrier film (see description and figures) so that the security feature permanently remains on the polymer substrate (see abstract that teaches that the feature remains benign after removal of the transfer film).
Regarding claim 2, Hoffmann remains as applied above and further teaches that the detachable carrier film is plastic (description of figures 2 and 3) and preferred to be PET.
Regarding claim 3, Hoffmann remains as applied above and further teaches that wherein connecting the at least one security feature to the polymer substrate includes applying at least one of thermal energy and pressure (thermal embossing (preparation of a laminate body or security document solved section).
Regarding claim 4, Hoffmann remains as applied above and further teaches that the detachable carrier film has a thickness of 6 um to 100 um (PET layer of 40-130 um).
Regarding claim 5, Hoffmann remains as applied above and further teaches that the transfer film further includes a separating layer arranged between the detachable carrier film and the at least one security feature (see figures); and removing the detachable carrier film includes facilitating the removal of the detachable carrier film with the separating layer (security document section).
Regarding claim 6, Hoffmann remains as applied above and further teaches that the separating layer is a separating lacquer (discussion of figures and 3).
Regarding claim 7, Hoffmann remains as applied above and further teaches that the transfer film further includes a connecting layer; an outer side of the transfer film is bounded by the detachable carrier film; an inner side of the transfer film is bounded by the connecting layer; and connecting the at least one security feature to the polymer substrate includes facilitating connection of the at least one security feature and the polymer substrate with the connecting layer (shown in figures and discussed in description section of figures 3-5).
Regarding claims 8 and 15, Hoffmann remains as applied above and further teaches that the connecting layer is one of a heat-sealing lacquer and an adhesive ("Polyester carrier as well as the heat seal adhesive").
Regarding claim 9, Hoffmann remains as applied above and further teaches that the transfer film further includes an adhesion promoter layer disposed between the at least one security feature and the connecting layer; and the adhesion promoter layer facilitates a connection between the at least one security feature and the connecting layer (see figures and adhesive in abstract).
Regarding claim 11, Hoffmann remains as applied above and further teaches cutting the polymer substrate after applying the transfer film (claim 50).
Regarding claim 12, Hoffmann remains as applied above and further teaches that the transfer film is applied onto the polymer substrate with a width of 0.5-30 mm (see claim 10, 10 mm).
Regarding claim 14, Hoffmann remains as applied above and further teaches that an outer side of the transfer film is bounded, by the detachable carrier film; and an inner side of the transfer film is bounded by the connecting layer (see figures).
Regarding claim 16, Hoffmann remains as applied above and further teaches that the at least one security feature includes a hologram (see claim 38).
Regarding claim 17, Hoffmann remains as applied above and further teaches that the at least one security feature includes a color-shifting coating (see claim 38).
Regarding claim 18, Hoffmann remains as applied above and further teaches that wherein the color-shifting coating includes at least one color-shifting thin-layer element (see claim 39 and figures).
Regarding claim 19, Hoffmann remains as applied above and further teaches that the detachable carrier film is composed of a translucent plastic and has a thickness of 12 um to 23 um ("The carrier film 41 is preferably made of a PET film and has, for example, a layer thickness between 15 pm and 200 pm, for example 19 pm").
Regarding claim 20, Hoffmann remains as applied above and further teaches that an outer side of the transfer film is connected by the detachable carrier film; or and an inner side of the transfer film is bounded, on its inner side, by the connecting layer (see figures).
Conclusion
THIS ACTION IS MADE FINAL. 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 JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748