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 1-2, 4, 6, 10, and 14, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seo (KR 10-2012-0094743) (See NPL for English Translation).
In respect to claims 1-2 and 6, the claims contain new matter and are indefinite for the reasons stated above, however, Seo discloses a spacer layer 100 comprising a first and second side; a layer of focusing elements 110 disposed on the first side of the spacer layer; an array of image elements 220d disposed on the second side of the spacer layer; and a machine-readable component (Mr-component) 210d disposed on the second side of spacer layer and dispersed between image elements of the array of image elements (Fig. 9); wherein the Mr-component (IR absorbing ink) is not visible in the visible spectral range when viewed through the focusing elements (0061; Fig. 10a); the image elements (forming an image layer) is disposed relative to the focusing elements such that a synthetic image is projected (0005). Seo discloses voids in the substrate layer 200 which are filed with both the image elements 220 and the Mr-components 210. Since the substrate layer 200 is a resin (flowable material) that is UV-cured to set, voids are formed in this material around the image elements/Mr-components. The resultant product is not formed via voids in the substrate 200 which are then filled with the image elements/Mr-components, however, 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 resultant product is the same, with the image elements/Mr-components embedded within the substrate. The voids are not disclosed, however, the resultant product is capable of being manufactured such that voids where formed in the substrate before ink application (rather than the resin substrate forming around the ink). Seo discloses that the image layer is below the base film (support) 100 as a separate layer (0057). Seo discloses that no image element 220d of the array of image elements is directly adjacent more than one Mr-component 210d; although the cross-sectional Figure 9 appears to show two Mr-components 210d directly adjacent the image element 220d, those are two portions of the same uninterrupted single Mr-component 210d (Fig. 10b).
In respect to the amended subject matter, Seo discloses that each image element 220 of the array of image elements is adjacent at least one solid, non-image, region of the separate layer (the “solid, non-image region” comprising protrusions of the substrate layer 200 between the Mr-components and image elements (border around the Mr-components 210d) (Fig. 10b). Each image element 220d is adjacent, “close or nearby” (dictionary.com) the solid, non-image, regions (Fig. 10b). It is further noted that the broad reasonable term of “adjacent”, which is not necessarily “directly adjacent” or “contiguous” conforms to the applicant’s own disclosure, which shows one image element (leftmost) which is not directly adjacent or contiguous with a solid, non-image, region (Fig. 2, Applicant).
In respect to claim 4, Seo discloses that the Mr-component may provide a signal in near-IR (0005).
In respect to claim 10, Seo discloses that the Mr-component may be phthalocyanine green (CI Pigment Green 7) (0034, Seo), as a non-limiting example, which is a copper-phthalocyanine, specifically chorine-substituted (See NPL).
In respect to claim 14, Seo discloses an opaque backcoat 200 contacting the array of image elements and Mr-component, opacified by coating 310d (Fig. 9). It is noted that a backcoat in contact with the array of image elements is not supported by elected Figure 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 3, 5, 7-9, 12-14, are rejected under 35 U.S.C. 103 as being unpatentable over Seo (KR 10-2012-0094743) (See NPL for English Translation) in view of Giering et al. (US 2008/0116272).
In respect to claims 3, the claims contain new matter and are indefinite for the reasons stated above, however, Seo substantially discloses the invention, but does not disclose multiple signals from the Mr-component, however, Giering et al. teach providing similar machine-readable features which also display signals in the invisible spectrum (0025), and furthermore, producing at least two signals from this component (0037). Giering et al. teach phthalocyanine (or substituted, metal-containing) in a matrix (crystal) used for the Mr-component (0075-0078). It would have been obvious to provide the Mr-component taught in Seo as at least two materials having different overlapping spectral properties in view of Giering et al. to frustrate accurate detection of the elements by forgers (0006-0007).
In respect to claims 5, 7-9, and 12-13, Giering et al. teach that the Mr-signature of the Mr-component may display in the IR, UV, or NIR ranges, or combinations of any of these ranges (0025). Giering et al. teach that the Mr-component may contain two signals within the UV range (0285, Fig. 3). Giering et al. teach substances which are IR absorbent, and emit in the IR (0055-0071), wherein the list of several materials which can be used together have first and second absorption wavelengths (e.g. 800 nm vs 850 nm). It would have been obvious to provide the Mr-component taught in Seo with any of the variety of Mr-components taught, including IR, UV, or NIR range components, in view of Giering et al. to provide at least two materials having different overlapping spectral properties (via different spectral ranges, e.g IR, UV, and/or NIR) in view of Giering et al. to frustrate accurate detection of the elements by forgers (0006-0007).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Seo (KR 10-2012-0094743) (See NPL for English Translation) in view of Bleikolm et al. (US 6,926,764).
The claims contain new matter and are indefinite for the reasons stated above, however, Seo discloses that the Mr-component may be phthalocyanine green (CI Pigment Green 7) (0034, Seo), as a non-limiting example, which is a copper-phthalocyanine (See NPL). Seo does not disclose that the IR-taggant is “benezenethiol-substituted [sic] copper-phthalocyanine”, however, Bleikolm et al. teaches a variety of phthalocyanine materials and, in particular, benzenethiol-substituted copper-phthalocyanine (Col. 5, 44-45). It would have been obvious to provide the copper-phthalocyanine taught in Seo as in particular a benzenethiol-substituted copper-phthalocyanine in view of Bleikolm et al. to avoid interference with visible colors of the inks (Col. 5, 38-43)
Furthermore, such a taggant material would have been obvious since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Seo discloses a copper-phthalocyanine and is only deficient in a specific modification of this material, specifically “benzenethiol-substituted”. This particular material is known as readily admitted by the applicant (Spec, 0056). The applicant incorporates the entire disclosure of Bleikolm et al. in selection of appropriate IR-taggants (Mr-components). Thus, selection among a known grouping of similar phthalocyanine taggants is well within the purview of one of ordinary skill.
Claims 1, 3-10, and 12-14 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Seo (KR 10-2012-0094743) (See NPL for English Translation) in view of Giering et al. (US 2008/0116272).
As detailed above, Seo fully anticipate the recitation “wherein the Mr-component is not visible in a visible spectral range”, however, the provision of the various Mr-components, including IR, UV, and/or NIR range components, in view of Giering et al. would have been obvious to frustrate accurate detection of the elements by forgers (0006-0007), as detailed above. Giering et al. further teaches that all Mr-components are not visible (i.e. “transparent”) (Claim 1).
Claims 1-2, 4, 6, 10, and 14, are additionally rejected under 35 U.S.C. 103 as being unpatentable over Seo (KR 10-2012-0094743) (See NPL for English Translation) in view of Cape et al. (US 2017/0173990).
Although Seo discloses the claimed subject matter for the reasons stated above, due to only differences being product-by-process, Cape et al. additionally teach providing voids in the substrate wherein different inks are provided in the voids to be cured (Abstract) (Figs. 1-4). It would have been obvious to provide the image elements and/or Mr-components taught in Seo as voids in the substrate (rather than direct printing) in view of Cape et al. to provide almost unlimited spatial resolution to the ink (0005). Furthermore, Cape et al. is particularly suitable to Seo, as the voids are provided with two or more differing inks (analogous to the image elements/Mr-components, of Seo) and Cape et al. provides a method of accurately registering multiple inks within the same voids via selective curing (0015-0016).
Claims 3, 5, 7-9, 12-14, are additionally rejected under 35 U.S.C. 103 as being unpatentable over Seo (KR 10-2012-0094743) (See NPL for English Translation) and Cape et al. (US 2017/0173990) in view of Giering et al. (US 2008/0116272).
The claims are similarly rejected above, with the addition of Cape et al. for the same reasons above.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Seo (KR 10-2012-0094743) (See NPL for English Translation) and Cape et al. (US 2017/0173990) in view of Bleikolm et al. (US 6,926,764).
The claims are similarly rejected above, with the addition of Cape et al. for the same reasons above.
Response to Arguments
Applicant's arguments filed 07/22/26 have been fully considered but they are not persuasive.
The applicant contends that Claim 1 recites that the Mr-component comprises a first infrared (IR) component within a spectral range, and that “the Office Action does not address this claim language in its 102 rejection citing Seo in any way” however the Office Action clearly indicates that Seo discloses “
wherein the Mr-component (IR absorbing ink)”, which clearly indicates that the Mr-component may comprise an IR absorbing ink. It is readily evident that such an ink is capable of imparting a machine readable signature through a difference in IR absorption (the human eye cannot detect IR signals, and its use for machines is readily evident, although not required as long as it is capable). Claim 4 further delineates that the IR-absorbing ink forming the Mr-component may absorb in the near-IR range (0005).
In respect to the amendment, the amendment does not overcome the prior art of Seo. As explained above, Seo discloses the new limitation.
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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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
