DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-5, and 7-14, are 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.
Independent claim 1 newly recites “wherein the Mr-component is not disposed next in sequence to another Mr-component” which is not support by the Specification. The “sequence” referred to is indefinite and unclear (see 35 USC 112(b), below), since the elements which constitute the “sequence” are not disclosed. At least one reasonable interpretation of the “sequence” would refer to only the Mr-component and the array of image elements, and at least in this instance, Figure 2 directly conflicts with the statement, as two Mr-components are disposed next in sequence (sequence of Mr-component and array of image elements) (Near center, Figure 2).
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 1, 3-5, and 7-14, 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.
As mentioned above, the “sequence” being referred to is indefinite since the applicant has not clearly and distinctly pointed out what elements are considered in the “sequence”.
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).
In respect to the amended subject matter, although indefinite, Seo further discloses that in a sequence constituting the Mr-component, array of image elements, and “solid, non-image regions” all in the same stratum, the Mr-components are not disposed “next in sequence” (Fig. 9) i.e. all Mr-components are surrounded by either the array of image elements and/or the “solid, non-image regions”, thus they are not disposed in sequence to another Mr-component. It is further noted that if taking the ambiguous “next in sequence” to only constitute the Mr-component and the array of image elements, Figs. 5-6 shown an embodiment wherein each character may represent each “Mr-component” or image element, and they alternate, thus no Mr-components are next in sequence.
In respect to claim 4, Seo discloses that the Mr-component may be 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 09/23/25 have been fully considered but they are not persuasive.
The new claim amendments are both indefinite and unsupported by the originally filed Specification. The arguments are drawn to Seo supposedly not disclosing a “solid region” in the sequence to separate the Mr-components, however, Seo clearly discloses 200, which may be construed as a non-image solid region (Fig. 9). If the ambiguous “sequence” is construed as in the rejection above, with the “solid regions” 200 being part of the sequence, Seo clearly anticipates the claim. Lastly, although not relied to above, it would been further obvious to invert the Mr-components and array of image elements, with no unexpected result. This would result in no Mr-components being “next in sequence” even if only the Mr-components and array of image elements are construed as the “sequence”.
Arguments against the 35 USC 103 rejections have been adequately addressed in several previous Office Actions.
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