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 .
Priority
This application is a 35 U.S.C. § 371 National Stage entry of PCT/EP2022/061472, filed 04/29/2022 and published as WO 2022/238146 A1 on 11/17/2022. The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
This application also claims benefit of EP 21173600.4, filed 05/12/2021.
Drawings
The drawings filed 10/06/2023 are acceptable. See MPEP § 608.02(b)(I).
Information Disclosure Statement
The IDSs filed 10/06/2023 and 12/19/2025 have been considered by the Primary Examiner.
Specification
The abstract of the disclosure is objected to because (i) it recites phrases that can be implied (“The present invention relates to”); and (ii) fails to recite any process steps. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claims 1 & 8 are objected to because of the following informalities: The preambles of both of these claims should conclude - - the method comprising the steps of: - - and - - the method including the steps of: - -, respectively. Appropriate correction is required.
Claim Interpretation
In the preamble of claim 8, mentioned above, the Primary Examiner interprets the transitional phrase “including” is interpreted as being synonymous with “comprising.” MPEP § 2111.03(I).
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 1-15 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.
Claim 1
Line 11 of claim 1 recites “a desired surface microstructure,” which is indefinite. Use of the indefinite article “a” makes it unclear whether this instance of “desired surface microstructure” is referring back to the previously recited “a desired surface microstructure” in the preamble, or to another, different microstructure. For the purposes of searching and applying the prior art, the Primary Examiner interprets the later recitation as referring back to the previously recited desired microstructure: - - providing the structure describing data for [[a]] the desired surface microstructure to the writing tool - -.
In the penultimate line of claim 1, the term “a resin” is indefinite. Use of the indefinite article “a” makes it unclear whether this instance of “resin” is referring back to the previously recited “optionally providing a resin,” or to another, different resin. For the purposes of searching and applying the prior art, the Primary Examiner interprets the later recitation as referring back to the previously recited resin: - - writing with the writing tool a structure in or on the target material or in [[a]] the resin using the structure describing data - -.
Claims 2-15 are similarly indefinite by virtue of their incorporation of this subject matter.
Claim 2
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “in the range from 10 nm to 1 mm,” and the claim also recites “more preferred in the range from 50 nm to 100 µm and most preferred in the range from 100 nm to 10 µm,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 3
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “in the range from 10 nm to 1 mm,” and the claim also recites “more preferred in the range from 50 nm to 100 µm and most preferred in the range from 100 nm to 10 µm,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 4
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “in the range from 0.050 to 0.95,” and the claim also recites “more preferred in the range from 0.2 to 0.8 and most preferred in the range from 0.3 to 0.7,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 5
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “in the range from 10 nm to 100 µm,” and the claim also recites “more preferred in the range from 30 nm to 10 µm and most preferred in the range from 50 nm to 2 µm,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 10
Regarding claim 10, the phrase "preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 13
The phrase “optimum surface microstructures for alignment of liquid crystals” is indefinite because it is unclear what sort of alignment for what type of liquid crystals is contemplated here. Moreover, the metes and bounds of “optimum” are unclear. Must the microstructures accomplish 100% of the desired alignment? Is there a tolerance? If so, how much? In other words, how to what degree must the microstructures cause a desired alignment of the liquid crystals to fall within the scope of the claim, and how much non-alignment may be present and still meet the limitations of the claim?
Claim 15
Regarding claim 15, the phrase "preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation “preferably larger than 1.1,” and the claim also recites “more preferred larger than 2 and most preferred larger than 5,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC §§ 102/103
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 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 6-12, 14, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2018/0015771 A1.
Claim 1
US 771 teaches a method for creation of a desired surface microstructure [0005], comprising:
providing a material with a surface structure having a topography (i.e., a three-dimensional object) that serves as an original surface to be reproduced ([0019] and [0084]);
providing a 3D surface profilometer (“contact profilometer” [0084]);
acquiring digital data of the original surface topography with the 3D surface profilometer ([0084] – [0086]);
providing a writing tool (e.g., e-beam lithography, laser beam lithography, Kinemax, holography, and/or mask-lighting process [0087]; see also [0093]);
processing the digital data of the original surface topography to obtain a structure describing the data to be written by the writing tool (i.e., F(x,y) [0085] – [0087]);
providing the structure-describing data for the desired surface microstructure to the writing tool (“the microstructure is introduced . . . by means of lithographic methods, in such a way that the microstructure . . . corresponds to the surface profile of the three-dimensional object . . . described by the function F(x,y)” [0087]);
providing a target material, which can be resin layers ([0092]);
creating the desired surface microstructure in or on the target material comprising writing with the tool a structure in or on the target or in a resin using the structure-describing data (“The microstructure 44 is preferably introduced into one of the layers 45, 46. The layers . . . are preferably varnish layers. The layers . . . are, in particular, formed from a thermoplastic varnish (e.g., from PVC, polyester or thermoplastic acrylates) or UV-curing varnish (e.g., from an acrylate crosslinking with isocyanate (NCO).” [0092]).
While US 771 does not explicitly teach that the 3D object having a topography specifically has a microstructure, US 771 does teach that the object can be a coin.
It is the Primary Examiner’s position that U.S. coins have features on the micrometer scale. See Fast & precise non-contact 3D measurement of surface details — What would Mr. Lincoln say?, Novacam (Oct. 28, 2021), https://www.novacam.com/2021/10/28/fast-and-precise-non-contact-3d-measurements-of-surface-details/, which is cited as a teaching reference that the relief height of the statue of Abraham Lincoln within the Lincoln Memorial on the reverse of the now-defunct penny is on the order of 18 microns.
Insofar as US 771 teaches coins, this reference necessarily teaches 3D objects having a surface microstructure which has a topography.
In the alternative, because US 771 teaches using a coin, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used any coin readily available, including a penny, which includes at least one micrometer scale feature. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully carrying out the US 771’s exemplary embodiment of using a coin as the 3D object.
Claim 6
US 771 teaches: “It is also possible for the first microstructure to be a combination of one of the above-named microstructures with an isotropic or anisotropic mat structure. Such a combination can be, for example, an additive or subtractive superimposition of the first microstructure with an isotropic or anisotropic mat structure” ([0022]).
Claim 7
US 771 teaches that one or more microstructure zones are built according to a periodic or non-periodic grid ([0050], [0058], claim 31).
Claim 8
US 771 teaches that the microstructure can be formed in a thermosetting or thermoplastic resin by a lithographic method. It is the Primary Examiner’s position that the steps recited in this claim: providing a surface; providing a crosslinkable and non-crosslinkable substances (i.e., the portions of the thermosetting resin that will crosslink with application of energy and those that are not exposed to energy); forming a material layer of the material composition on the substrate (i.e., the polymer layer); initiating crosslinking by irradiation with UV light ([0104]); and removing non-crosslinked substances, are all part of the process disclosed by US 771 ([0087]).
Claims 9 & 10
US 771 teaches that the microstructure is limited to a predetermined value smaller than the maximum distance between the surface profile and the two-dimensional reference surface (i.e., the reproduced pattern is scaled to ensure that it fits on the reference surface in the x and y dimensions which reads on the claimed lateral scaling in two difference perpendicular directions.
Claim 11
US 771 does not teach binarization of the digital data of the original surface. Nevertheless, it is well known in the art, in particular developing a function F(x,y) to describe a surface, to digitize the data in binary form for storage, interpretation, and use by a computer. Consequently, it would have been obvious to one of ordinary skill in the art to do so.
Claim 12
US 771 does not teach the limitation of the claim. Nevertheless, the reference places no limitation as to how the pattern can be reproduced on the surface using the stored formula F(x,y) that describes the relationship of the original micropattern. Consequently, it is the Primary Examiner’s opinion that it would have been obvious to one of ordinary skill in the art to arrange the pattern or components in the pattern to give the desired optically varied finished product.
Claims 14 & 15
US 771 does not explicitly disclose that the depth of the microstructure is larger than the original, or that the microstructure aspect ratio is as claimed.
Nevertheless, US 771 teaches only that the lateral dimensions (x,y) are constrained and does not limit the vertical depth, height, thickness, etc., of the microstructure.
Consequently, it would have been obvious to one of ordain skill in the art to form a pattern of any desired thickness to accomplish the desired optical variability. Since the depth and aspect ratio affects the optical variability of the finished structure, it would have been obvious to optimize the aspect ratio by routine experimentation, absent evidence of criticality. MPEP § 2144.05.
Claim(s) 2-4 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0015771 A1, as applied to claim 1 above, further in view of US 2009/0179418 A1.
Claims 2 & 3
While US 771 places no particular limitation on the original surface microstructure, US 771 does not explicitly teach that the original surface microstructure comprises an area in which the average structure width, which when the surface microstructure is anisotropic, is determined along the direction perpendicular to the anisotropy direction, is within the claimed range(s).
US 771 additionally teaches that its method is suitable for producing optically variable security elements ([0003] – [0004]). US 418 teaches the production of optically variable security devices ([0005]) by the formation of anisotropic surface relief microstructures ([0039], [0050], [0084], [0091], [0092], [0093], [0136], and claim 5). Moreover, US 418 teaches that the optically variable affect is determined by the orientation of anisotropic light scattering areas ([0011].
It is the Primary Examiner’s position that: (1) because US 771 teaches using the method to produce optically variable security elements; and (2) because US 418 teaches that it is known in the art of forming optically variable security elements that the orientation of anisotropic light scattering areas determines the optically variable effect, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the process of US 771 so as to use, as the original surface microstructure – the structure from which the security element is reproduced in the method of US 771 – from a surface having at least some anisotropic areas in order to give the desired optical variability.
It would have been further obvious to optimize the sizes and dimensions of the anisotropic areas so as to give the desired optically variant outcome by routine experimentation, absent evidence of criticality. MPEP § 2144.05.
Claim 4
US 771 does not teach the claimed fill factor of the original surface microstructure.
US 418 teaches: “To quantify another property of surface relief microstructures, the surface relief fill factor is introduced. In the context of the present invention the surface relief fill factor is defined as the ratio of the total area of top regions to the integrated area over all top and all bottom regions. For good and best optical performance, it normally may be advantageous when the top and bottom regions approximately have the same total area. In other words, the top and bottom regions should balance each other, which means, the surface relief fill factor should be near 0.5. This corresponds to a histogram with two peaks of the same size . . . . In general, the surface relief fill factor of surface relief microstructures according to the invention may lie in a quite broad range. Preferably, the surface relief fill factor is between 0.05 and 0.95 preferably between 0.2 and 0.8. More preferably, the surface relief fill factor lies between 0.3 and 0.7 or between 0.4 and 0.6.” ([0104] – [0105]).
It would have been obvious to one of ordinary skill in the art to select a fill factor within the range of 0.05 – 0.95 , preferably 0.2 – 0.8, as such a range is known in the art of optically variable articles to yield a functional result. Moreover it would again have been obvious to one of ordinary skill in the art to optimize the fill factor, so as to obtain a desired optically variable appearance, by routine experimentation, absent evidence to the contrary. MPEP § 2144.05.
Claim 13
US 771 does not teach that the desired surface microstructure contains a region which provides optimum surface microstructures for alignment of liquid crystals.
Nevertheless, US 418 teaches that the microstructure can serve to align liquid crystal (LC) materials ([0119]).
Consequently, it would have been obvious to one of ordinary skill in the art to form the pattern in US 771 so as to provide a microstructure that aligns LCs, as US 418 demonstrates doing so is known in the art.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0015771 A1, as applied to claim 1 above, further in view of US 2018/0106932 A1.
US 771 does not teach the claimed structure depth of the original surface microstructure.
US 932 teaches the production of optically variable security devices ([0005]) by the formation of non-periodic, anisotropic surface relief microstructures ([0006]). As noted above, US 418 teaches that the optically variable affect is determined by the orientation of anisotropic light scattering areas ([0011].
US 932 teaches “an image is encoded at least partially by non-periodic anisotropic surface relief microstructures of different structure depth in different areas. Such an image appears with locally different colors or grey levels. The creation of different depths can, for example, be done by locally blocking or delaying etching into the substrate” ([0078). Exemplary structure depths include 180 – 230 nm (0.18 – 0.23 micron), 240 – 280 nm (0.24 – 0.28 micron), 290 -345 nm (0.29 – 0.345 micron), 365 – 380 nm (0.365 – 0.380 micron) and 430 nm – 600 nm (0.43 – 0.60 micron), depending on the color of color desired for the optically variable microstructure ([0077]). These ranges overlap those recited and are prima facie obvious. MPEP § 2144.05.
Because the anisotropic structure in US 771 is three dimensional, it must have a depth. It would have been obvious to one of ordinary skill in the art to select the depth to be within the range taught by US 932, because such depths are known in the art to provide desirable color to the optically variable security devices produced from the non-periodic, anisotropic relief structures.
In the alternative, because the structural depth affects the color, it would have been obvious to one of ordinary skill in the art to optimize the depth by routine experimentation, absent evidence of criticality. MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2012/0027998 A1 teaches a method for the replication of a patterned surface relief microstructure, comprising the steps of generation of a first layer with a patterned surface relief microstructure, generation of a master, by copying the microstructure of the first layer into a second layer, thereby involving at least one dry or wet etching step, characterized by an additional step, in which the microstructure of the master is brought into contact with a replica material, such that the microstructure of the master is reproduced in the replica. This reference differs from the instant claims in that it creates a master through etching instead of with a writing tool.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
07 January 2026