DETAILED ACTION
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 23-45 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.
Independent claims 23 and 45 recite “wherein the spacing of the elongate nanomagnets corresponds at least to a perimeter of individual elongate nanomagnets” which is indefinite. The spacing of at least adjacent elongate nanomagnets is less than a “perimeter” (Fig. 6). A perimeter of an elongate nanomagnet is equal to the distance of 4 sides, wherein the spacing between vertically or horizontally spaced elongate nanomagnets is the distance of 2 sides. Elogonate nanomagnets with touch on their corners are spaced even less than the distance of 2 sides.
Independent claim 23 contains additional unclear and/or indefinite language in stating that “the at least one optical functional layer includes a color-flop coating and at least one of the following [a list of structures, at least some of which, constitute said optical functional layer]. It is unclear since the color-flop coating is claimed and additionally elements which make up the coating, redundantly.
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 23, 26, and 28-44, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Argoitia (US 2006/0263539).
In respect to claim 23, although indefinite for several 35 USC 112 issues, above, Argoitia discloses a platelet-shaped magnetic effect pigment (for use in an ink) comprising: a magnetic layer 77 and at least one “optical functional layer” (adjacent dielectric/absorbing layers) 73/75/77/81 (Fig. 3C); the magnetic layer comprises elongate nanomagnets that “tend to align” in a direction parallel to the main platelet plane (0073-0076; Fig. 3A), however, it may be construed to have another “preferred” direction; furthermore, the “platelet plane” is undefined and arbitrary, and may be construed as a plane of the platelet in cross-section, thus the magnetic layer 77 is perpendicular to this plane (Fig. 3C); the “diameter” of the nanomagnets is unclear and indefinite, however, the individual nanomagnets are spaced apart at least as far as any reasonable interpretation of their “diameter”, the most reasonable being the diameter of their curvatures (Fig. 3C).
In respect to claim 26, Argoitia discloses the “diameters” and lengths in the ranges claimed (0077).
In respect to claim 28, Argoitia discloses that the magnetic layers may be formed of nickel (0077).
In respect to claims 29-35, Argoitia discloses further details of the “optical functional layer” including an “a dielectric and absorbing layer” (see above), wherein the construction may be “sandwich-like” with optical functional layers on both sides of the reflective metal layer (Fig. 3C), or else asymmetric (Fig. 3B), and includes at least one option of the vast array of alternate configurations claimed (0074-0084).
In respect to claims 36-37, Argoitia discloses the claimed invention for the reasons stated above (it is notable that “honeycomb” or “chessboard” are not required “in particular”). Argoitia further discloses that the magnetic layer is provided on an embossed layer (0060-0061).
In respect to claims 38-44, Argoitia discloses the platelet-shaped magnetic effect pigments as detailed above, and further that they may be provided in an ink (0068); a first ink may be printed in a first region 92 and a second ink may be printed in an adjoining second region 94, wherein in each region the inks are subjected to an external magnetic field (0085-0089; Fig. 4), the inks may be cured in place (0068); these printed inks with the platelet-shaped magnetic effect pigments may be printed on banknotes (0106).
Claims 23 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gurovich et al. (US 2002/0182312).
In respect to claim 23, although indefinite for several 35 USC 112 issues, above, Gurovich et al. disclose a substrate* comprising: a magnetic layer 5 and at least one “optical functional layer” 1 (wherein an “optical functional layer” is completely deficient of structure and could include any structure which could be optically analyzed); the magnetic layer comprises elongate nanomagnets 5 that are aligned in an direction perpendicular to the main plain of the substrate (Fig. 3a); the “diameter” of the nanomagnets is unclear and indefinite, however, the individual nanomagnets are spaced apart at least as far as any reasonable interpretation of their “diameter”, e.g. the length of one of the rectangular sides; the elongate nanomagnets may be spaced apart from one another in at least two perpendicular directions a “checkerboard” pattern (Fig. 3C).
*The term “platelet-shaped magnetic effect pigment for use in a printing ink”, can be construed as a preamble, as claimed. There is no particular structural configuration. Even a large substrate can be used “for a printing ink” e.g. cut down to smaller pieces (as is common for effect pigments).
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 23-24 and 26-44 are additionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dehmel et al. (DE 10-2019-008289).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
The patent is substantially similar to the claimed invention, and has the same assignee. Due to several 35 USC 112 issues above, as well as further prior art rejections, the Examiner will not delineate all the claims at this time, especially since it appears very likely that 102(a)(2) rejection will be overcome by at least one of the exemptions above.
Allowable Subject Matter
Claim 23 may be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 45 may be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Both claims have introduced unclear and indefinite language which make it impossible to ascertain differences between the previously cited prior art.
Response to Arguments
Applicant's arguments filed 01/29/26 have been fully considered but they are not persuasive.
The amendments have been newly rejected under 35 USC 112 as introducing unclear/indefinite subject matter.
The prior art rejections remain as previously applied since all the amended subject matter attempting to distinguish from the prior art cannot be ascertained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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