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 .
Remark
This Office Action is in response to applicant’s amendment field on June 11, 2026, that has been entered into the file.
By this amendment, the applicant has canceled claims 1-14 and has amended clam 15 and has newly added claims 16-28.
Election/Restrictions
Applicant’s election without traverse of claim 15 (Group II) in the reply filed on June 11, 2026 is acknowledged.
Claims 15 and 16-28 remain pending in this application.
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 24 and 25 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.
The phrase “at least one additional layer is deposited on the substrate” recited in claim 24 and the phrase “the at least one additional layer includes a first dielectric layer … a second dielectric layer” recited in claim 25 are confusing and indefinite since it is not clear how does this additional layer structural related to the rest of the elements of the security product. Furthermore, the base claim (claim 1) recites that the discontinuous layer is also deposited on the substrate, so it is not clear how does this at least on additional layer and the discontinuous layer relate to each other.
The scopes of the claims are therefore unclear.
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.
Claim(s) 15-23 and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over US patent issued to Ko et al (PN. 10,532,596) and in view of the US patent issued to Phillips et al (US 6,987,590) and US patent application publication by Misawa et al (US 2021/0294009 A1).
Ko et al, teaches with regard to claim 15, a plasmonic structure having an identifier pattern that serves as the security product, that is comprised of a substrate (please see Figure 4, column 8, lines 20-30), a silver thin film layer serves as the electrically conducting material deposited on the substrate and the thin film layer is thermally treated to provide silver nanoparticles exhibits a surface plasmonic resonance effect.
This reference has met all the limitations of the claims. Ko et al teaches that the silver nanoparticles are arranged in discontinuous pattern to provide the identifier pattern. This reference however does not teach explicitly that the silver thin film layer is a discontinuous layer. Phillips et al in the same field of endeavor teaches a security element with patterned reflective optical structure wherein the reflective layer (26, Figures 1 and 2) that comprises electrically conducting material such as silver (please see column 4, line 40) that may be a discontinuous layer to provide identifier pattern. It would then have been obvious to one skilled in the art to apply the teachings of Phillips et al to modify the silver thin film layer to be discontinuous layer for the benefit of provide additional identifier pattern for added security measure.
Ko et al teaches that the silver nanoparticles are formed by thermally treating the silver thin film layer, but it does not teach explicitly that the thermal treatment is laser-annealing process. However, this feature is a product-by-press limitation that is not given patentable weight since it does distinguish the final product from the prior art disclosure, (please see MPEP 2173.05(p)). Furthermore, as taught by Misawa et al it is known in the art to use a thermal annealing process at 3000 C to treat metal film to form the metal nanoparticles, (please see paragraph [0045]). It would then have been obvious to one skilled in the art to apply the teachings of Misawa et al to use annealing process to form the metal nanoparticles for the benefit of using art well-known process to form the nanoparticles. Although this reference does not teach explicitly that the thermal annealing process is laser-annealing process however using laser light source to anneal or treat metal to create high temperature annealing effect is well known in the art.
With regard to claims 16-17, Phillips et al teaches that a typical substrate for a security element may comprise polymer such as polycarbonate, PET or PMMA, (please see column 5, lines 19-25). And the thickness of the substrate may be in the range of 3 mm to 100 mm, (please see column 5, lines 29-31).
With regard to claim 18, both Ko et al and Phillips et al teach that the discontinuous electrically conducting material layer may comprise silver layer, (please column 8, lines 20-25 of Ko et al and column 4, line 40 of Phillips et al).
With regard to claim 19, Ko et al teaches that the thickness of the thin silver film layer is about 10 nm that is less then 100 nm, (please see column 8, line 24) and Phillips et al teaches that the thickness of the metallic layer is about 50 nm to 100 nm, (please see column 4, line 50) that may be less than about 100 nm.
With regard to claim 20, Ko et al teaches that the electric conducting material is deposited on the substrate, (please see column 8, lines 20-30). Although this reference does not teach explicitly that the deposition is art well-known vacuum deposition, this feature is considered to be product-by-process limitation that is not given patentable weight since it does not distinguish the final product from the prior art disclosure, (please see MPEM 2137.05(P)). Furthermore, Misawa et al teaches that the thin metal film may be deposited by vacuum evaporation method, (please see paragraph [0045]). Such modification would then have been obvious to use art well-known deposition method to deposit the electrical conducting material layer.
With regard to claim 21, Misawa et al teaches that the annealing method for forming the nanoparticles is using a light source at 3000 C, (please see paragraph [0045]). Although these references however do not teach explicitly that the laser is Excimer or solid-state laser, however these laser sources are well-known in the art to use either one laser source is considered to be obvious to one skilled in the art.
With regard to claims 22 and 23, Phillips et al teaches that a transmissive layer (22, Figures 1, 2, and 7B or 42, Figures 3, 7A or 7B ) may serve as encapsulation layer deposited onto the discontinuous layer of electrically conducting material (26) wherein the encapsulation layer may comprise polymer material, (please see column 3, lines 55-59). This layer may provide a protective hard-coat for the discontinuous electrically conducting material.
With regard to claims 26 and 27, Ko et al in light of Misawa et al teaches that the electrically conducting material is annealed such that the nanoparticles may be at least partially submerged within the layer, (please see Figure 1). Although these references do not teach explicitly that the nanoparticles may alternatively be fully submerged within the layer, such modification is considered to be obvious modification by one skilled in the art.
With regard to claim 28, Ko et al teaches that the security product exhibits a plasmonic response in the infrared spectrum, (please see the abstract).
Claim(s) 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ko et al, Misawa et al and Phillips et al as applied to claim 15 above, and further in view of US patent issued to Heim (PN. 7,699,350).
The plasmonic structure serves as the security element taught by Ko et al in combination with the teachings of Misawa et al and Phillips et al as described in claim 15 above has met all the limitations of the claims.
With regard to claims 24 and 25, these references do not teach explicitly to include at least one additional layer deposited on the substrate. Phillips et al in a different embodiment teach that an additional layer (52 and/or 54 and/or 56) as shown in Figure 4 may be deposited on the substrate (22). This reference however does not teach explicitly that the at least one additional layer comprises a first dielectric layer and a second dielectric layer. Heim in the same field of endeavor teaches a security element that is comprised of a discontinuous electric conductive layer (R, Figure 8) with a first dielectric layer and a second dielectric layer (D1 and D2) are deposited on the substrate (S) wherein the first dielectric layer and the second dielectric layer may comprise different dielectric materials which may comprise different refractive indices, (please see column 3 lines 25-30). It would then have been obvious to apply the teachings of Heim to further include at least one additional layer that comprises a first and a second dielectric material layers for the benefit of allowing additional optical feature be provided with the security element.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY Y CHANG whose telephone number is (571)272-2309. The examiner can normally be reached M-TH 900AM-430PM.
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AUDREY Y. CHANG
Primary Examiner
Art Unit 2872
/AUDREY Y CHANG/Primary Examiner, Art Unit 2872
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