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 .
Response to Amendment
Claims 48-50 have been added and examined as such.
Claims 21 & 27 have been canceled as requested by the Applicant.
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.
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.
Claims 18, 20, 22-26, 28-29, 31-35, 37-42, 44, & 50 are rejected under 35 U.S.C. 103 as being unpatentable over Meier et al. (US 2004/0114981 A1) in view of Kubert et al. (US 2003/0151248 A1) and Jackson et al. (US 2002/0140165 A1) and further in view of Atlantic Zeiser - WB (NPD #U PTO-892 19 May 2025).
As related to independent claim 18, Meier et al. teaches a card personalization system, comprising: a card feed mechanism (Meier et al. Page 2, Paragraph 28 and Figure 3, Reference #102, #164, #166, & #110, shown below), a smart card programming mechanism [i.e. expansion module] that is configured to simultaneously program integrated circuit chips on multiple cards (Meier et al. – Page 4, Paragraph 53), a card printing mechanism (Meier et al. – Page 2, Paragraph 32 and Figure 3, Reference #100, shown below), and a card output [i.e. end] (Meier et al. – Page 4, Paragraph 54 and Figure 3, Reference #252 & #260, shown below), all disposed along a card processing path (Meier et al. – Figure 3, shown below); the smart card programming mechanism [i.e. expansion module] is disposed between the card feed mechanism and the card printing mechanism (Meier et al. – Page 4, Paragraphs 51 & 53, and Figure 3, Reference #102, #164, #166 & #100, shown below); the card printing mechanism is disposed between the smart card programming mechanism and the card output (Meier et al. – Page 4, Paragraphs 51 & 53, and Figure 3, Reference #100, #252, & #260, shown below); the card feed mechanism includes at least one card hopper containing a plurality of cards to be fed one-by-one onto the card processing path, each card having a first surface, a second surface, and an integrated circuit chip (Meier et al. Page 2, Paragraph 28; Page 4, Paragraphs 51-53; and Figure 3, Reference #102, #164, #166, & #110, shown below).
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Continuing with claim 18, Meier et al. does not specifically teach a drop-on-demand printer or printing UV curable ink. However, Kubert et al. teaches a card processing system with multiple processing mechanisms including a printing mechanism specifically using a drop-on-demand printer [i.e. inkjet printer] (Kubert et al. – Page 1, Paragraph 3 and Page 2, Paragraphs 13 & 22) and specifically teaches the ink jet ink is UV curable ink (Kubert et al. – Page 1, Paragraphs 7 & 9 and Pages 2-3, Paragraph 25 and Figure 1, Reference #16 & #28, shown below). It would have been obvious to one of ordinary skill in the art at the time of filing the invention to recognize the printing mechanisms of card processing systems as taught by Meier et al. and specify the type of ink to be used as taught by Kubert et al. in order to provide a card processing system with printing using well known printing systems while reducing production loss and card cost (Kubert et al. – Page 1, Paragraphs 3 & 5 and Page 2, Paragraph 22).
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Continuing with claim 18, the combination of Meier et al. and Kubert et al. teaches the card printing mechanism includes a primary card travel path that is collinear with the card processing path (Meier et al. – Figure 3, shown above and Kubert et al. – Figure 1, shown above) and the card output is configured to collect processed cards (Meier et al. – Page 4, Paragraph 54 and Figure 3, Reference #260 & #110, shown above) but does not specifically teach the orientation of the first and second card as claimed. However, Jackson et al. teaches a processing system with a printing mechanism and a recirculating system (Jackson et al. – Page 6, Paragraph 59 and Figure 8, Reference #704, shown below) and specifically teaches the card printing mechanism is configured so that the primary card travel path has a first card and a second card thereon in sequence with one another, wherein the first card is oriented with the first surface thereof facing upward and the second surface thereof facing downward, and the second card is oriented with the second surface thereof facing upward and the first surface thereof facing downward (Jackson et al. – Page 6, Paragraph 60-61 and Figure 9, Reference #801A, #801B, #801C, & #811, shown below);
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It would have been obvious to one of ordinary skill in the art at the time of filing the invention to recognize the optional mechanisms of card processing and location and orientation thereof to include the use of the card printing other card processing mechanisms as taught by the combination of Meier et al. and Kubert et al. and modify them with the mechanisms of Jackson et al. in order to provide an accurate simplified method of duplex handling (Jackson et al. – Page 2, Paragraph 13).
Continuing with claim 18, the combination of Meier et al., Kubert et al., and Jackson et al. remains as applied above, but does not specifically teach the generic alternative design choice well-known in the art at the time of filing to simultaneously program multiple cards. It would have been obvious to one of ordinary skill in the art at the time of filing to allow for the configuration of the “expansion module” of the combination of Meier et al., Kubert et al., and Jackson et al. to use a common design choice of simultaneously programming multiple cards in an effort to reducing production loss and card cost, while improving production speed (Kubert et al. – Page 1, Paragraphs 3 & 5 & Page 2, Paragraph 22 and Jackson et al. – Page 1, Paragraph 12). Meanwhile, Atlantic Zeiser - WB teaches a card personalization system comprising a card feed mechanism, a smart card programming mechanism, a card printing mechanism and a card output (Atlantic Zeiser - WB – Pages 1-2) and specifically teaches a smart card programming mechanism that is configured to simultaneously program integrated circuit chips on multiple cards [i.e. scalable chip programming module] (Atlantic Zeiser - WB – Page 2, Reference “Chip Programming”). It would have been obvious to one of ordinary skill in the art at the time of filing to specify the expansion module for chip programming of the combination to include the scalable number of chip programming of Atlantic Zeiser - WB in an effort to provide a card personalization system with low consumable and maintenance cost that is more durable, more flexible and high speed (Atlantic Zeiser - WB – Pages 1-2).
As related to independent claim 29, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains for the reasons indicated above and continues to teach a card personalization system, comprising: a card feed mechanism that includes at least one card hopper containing a plurality of cards to be fed one-by-one onto a card processing path, each card having a first surface, a second surface, and an integrated circuit chip; a smart card programming mechanism on the card processing path downstream from the card feed mechanism that is configured to simultaneously program multiple cards (Meier et al. Page 2, Paragraph 28-32; Page 4, Paragraphs 51 & 53; and Figure 3, Reference #102, #164, #166, #110, #100, #252, & #260, shown above and Atlantic Zeiser - WB – Pages 1-2); a single drop-on-demand print station on the card processing path downstream of the smart card programming mechanism, the drop-on-demand print station includes a print head that is configured to perform drop-on-demand printing with a UV curable ink (Kubert et al. – Page 1, Paragraphs 7 & 9 and Pages 2-3, Paragraph 25 and Figure 1, Reference #16 & #28, shown above; Jackson et al. – Figure 9, Reference #811, shown above; Page 6, Paragraph 59; and Figure 8, Reference #704, shown below; and Atlantic Zeiser - WB – Pages 1-2); the single drop-on-demand print station is configured so that the single drop-on-demand print station has a first card and a second card therein in sequence with one another, wherein the first card is oriented with the first surface thereof facing upward and the second surface thereof facing downward, and the second card is oriented with the second surface thereof facing upward and the first surface thereof facing downward (Jackson et al. – Page 6, Paragraph 60-61 and Figure 9, Reference #801A, #801B, #801C, & #811, shown above); a card output on the card processing path downstream of the single drop-on-demand print station that is configured to collect processed cards (Meier et al. – Page 4, Paragraph 54 and Figure 3, Reference #260 & #110, shown above and Jackson et al. – Figure 10B, Reference #16, shown below).
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As related to independent claim 35, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains for the reasons indicated above and continues to teach a card personalization system that personalizes cards having a first surface and a second surface, comprising (Meier et al. Page 2, Paragraph 28-32; Page 4, Paragraphs 51 & 53; and Figure 3, Reference #102, #164, #166, #110, #100, #252, & #260, shown above): a card printing mechanism that includes a single drop-on-demand print station that includes at least one print head that is configured to perform drop-on-demand printing with a UV curable ink (Kubert et al. – Page 1, Paragraphs 7 & 9 and Pages 2-3, Paragraph 25 and Figure 1, Reference #16 & #28, shown above; Jackson et al. – Figure 9, Reference #811, shown above; Page 6, Paragraph 59; and Figure 8, Referend #704, shown above; and Atlantic Zeiser - WB – Pages 1-2); the single drop-on-demand print station is configured so that the single drop-on-demand print station has a first card and a second card therein in sequence with one another, wherein the first card is oriented with the first surface thereof facing upward and the second surface thereof facing downward, and the second card is oriented with the second surface thereof facing upward and the first surface thereof facing downward (Jackson et al. – Page 6, Paragraph 60-61 and Figure 9, Reference #801A, #801B, #801C, & #811, shown above).
As related to independent claim 41, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains for the reasons indicated above and continues to teach a method of personalizing cards in a card personalization system, the cards having a first surface and a second surface (Meier et al. Page 2, Paragraph 28-32; Page 4, Paragraphs 51 & 53; and Figure 3, Reference #102, #164, #166, #110, #100, #252, & #260, shown above), the method comprising: inputting a first card followed by a second card into a drop-on-demand print station that includes at least one print head that is configured to perform drop-on-demand printing with a UV curable ink (Kubert et al. – Page 1, Paragraphs 7 & 9 and Pages 2-3, Paragraph 25 and Figure 1, Reference #16 & #28, shown above; Jackson et al. – Figure 9, Reference #811, shown above; Page 6, Paragraph 59; and Figure 8, Referend #704, shown above; and Atlantic Zeiser - WB – Pages 1-2), wherein the first card and the second card are in sequence with one another, the first card is oriented with the first surface thereof facing upward and the second surface thereof facing downward, and the second card is oriented with the second surface thereof facing upward and the first surface thereof facing downward (Jackson et al. – Page 6, Paragraph 60-61 and Figure 9, Reference #801A, #801B, #801C, & #811, shown above).
As related to dependent claims 20, 31, & 37, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach a UV curing station downstream of the single drop-on-demand print station (Kubert et al. – Page 3, Paragraph 30 & Figure 1, Reference #28, shown above).
As related to dependent claims 22, 32, 38, & 42, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach the card printing mechanism is configured to print on both the first surface and the second surface of the first card and the second card; wherein the card printing mechanism is configured so that the first card travels in a first direction during printing on the first surface thereof, the first card travels in a second direction opposite the first direction after printing on the first surface thereof and prior to printing on the second surface thereof, and the first card travels in the first direction during printing on the second surface thereof (Jackson – Figures 8 & 9, Reference #801A, #801B, #801C, #811 & Arrows, shown above).
As related to dependent claim 23, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach the card printing mechanism comprises a flipper for flipping a card (Meier et al. – Page 4, Paragraph 53 and Atlantic Zeiser - WB – Pages 1-2).
As related to dependent claims 24 & 33, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach an additional card processing mechanism that is configured to perform a processing operation on the cards that differs from the programming of the integrated circuit chips performed by the smart card programming mechanism (Meier et al. – Page 4, Paragraph 53 and Figure 3, shown above).
As related to further dependent claims 25 & 34, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach the additional card processing mechanism is disposed between the card feed mechanism and the card printing mechanism (Meier et al. – Page 4, Paragraphs 51-53 and Figure 3, shown above).
As related to further dependent claim 26, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach each card further includes a magnetic stripe, and the additional card processing mechanism comprises a magnetic stripe programming mechanism (Meier et al. – Page 4, Paragraphs 51-53 and Kubert et al. – Page 1, Paragraph 3 and Page 4, Paragraph 43).
As related to dependent claim 28, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach a third card in sequence with the first card and the second card on the primary card travel path, wherein the second card is located between the first card and the third card, wherein the third card is oriented with the first surface thereof facing upward and the second surface thereof facing downward (Jackson – Figures 9, Reference #801A, #801B, #801C, #811 & Arrows, shown above).
As related to dependent claim 39, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach each card further includes an integrated circuit chip, and further comprising a smart card programming mechanism that is configured to simultaneously program the integrated circuit chips on multiple cards, the smart card programming mechanism is located upstream of the card printing mechanism (Meier et al. Page 2, Paragraph 28-32; Page 4, Paragraphs 51 & 53; and Figure 3, Reference #102, #164, #166, #110, #100, #252, & #260, shown above; and Atlantic Zeiser - WB – Pages 1-2).
As related to dependent claim 40, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach each card further includes a magnetic stripe, and the additional card processing mechanism comprises a magnetic stripe programming mechanism (Meier et al. – Page 4, Paragraphs 51-53; Kubert et al. – Page 1, Paragraph 3 and Page 4, Paragraph 43; and Atlantic Zeiser - WB – Page 2).
As related to dependent claim 44, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach applying UV light to the first surface or to the second surface in a UV curing station after printing on the first surface or the second surface thereof (Kubert et al. – Page 3, Paragraph 30 and Figure 1, Reference #28, shown above).
As related to dependent claim 50, the combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach using a mechanism downstream from the drop-on-demand print station to (either direct the first card onto a return card travel path that is configured to return the card to a location upstream of the drop-on-demand print station or) advance the first card through the mechanism toward a card output (Meier et al. – Figure 3, Reference #114, #244, & #108, shown above).
Claims 19, 30, 36, & 43 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Meier et al. (US 2004/0114981 A1), Kubert et al. (US 2003/0151248 A1), Jackson et al. (US 2002/0140165 A1), and Atlantic Zeiser - WB (NPD #U PTO-892 19 May 2025) in further in view of Klinefelter et al. (US 2006/0070545 A1).
The combination of Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB remains as applied above and continues to teach a surface treatment upstream of a drop-on-demand print station (Kubert et al. – Page 3, Paragraph 27 and Figure 1, Reference #30, shown above) but does not specifically teach a surface treatment station upstream of the drop-on-demand print station, the surface treatment station is configured to treat the first surface or the second surface of each card. However, Klinefelter et al. teaches a card personalization system (Klinefelter et al. – Figure 7, shown below) and specifically teaches a surface treatment station upstream of the drop-on-demand print station, the surface treatment station is configured to treat [i.e. coating the surface] the first surface or the second surface of each card (Klinefelter et al. – Page 1, Paragraphs 4-7). It would have been obvious to one of ordinary skill in the art at the time of filing to modify the card personalization system of the combination of M Meier et al., Kubert et al., Jackson et al., and Atlantic Zeiser - WB with the surface treatment station of Klinefelter et al. in an effort to ensure the ink from ink jet printers adheres to the surface of the card to be printed thereon (Klinefelter et al. – Page 1, Paragraph 3).
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Allowable Subject Matter
Claims 45-47 are still objected to as being dependent upon a rejected base claim [claim 18], but would be allowable if rewritten in independent form including all of the limitations of the base claim [claim 18] and any intervening claims.
Claims 48 & 49 are objected to as being dependent upon a rejected base claim [claim 29 or 35, respectively], but would be allowable if rewritten in independent form including all of the limitations of the base claim [claim 29 or 35, respectively] and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Applicant added the dependent claim 45 and the further dependent claims 46-47 which incorporate all of the limitations of dependent claim 45 to add a further structural limitation of a mechanism downstream from the drop-on-demand print station configured to transport a card from the primary card travel path to a return card travel path that is configured to return the card to a location upstream of the drop-on-demand print station and downstream from the card feed mechanism and further configured so that a card for which no further printing is required may advance through the mechanism and out of the card printing mechanism toward the card output.
Applicant added the dependent claim 48 to add a further structural limitation of a mechanism downstream from the drop-on-demand print station configured to transport a card to a return card travel path that is configured to return the card to a location upstream of the drop-on-demand print station and downstream from the card feed mechanism and further configured so that a card for which no further printing is required may advance through the mechanism and out of the card printing mechanism toward the card output.
Applicant added the dependent claim 49 to add a further structural limitation of a mechanism downstream from the drop-on-demand print station configured to transport a card to a return card travel path that is configured to return the card to a location upstream of the drop-on-demand print station, wherein the mechanism is further configured so that a card for which no further printing is required may advance through the mechanism and out of the card printing mechanism toward the card output.
Prior Art Jackson et al. teaches a return travel path configured to return print medium to a location upstream of the drop-on-demand print station, but does not teach the limitation of a mechanism to transport a card from the primary card travel path to a return card travel path.
The grandparent application US Application 16/291739, now US Patent 11,238,330 B2, while claiming a similar return card travel path, does not include all of the claimed structural limitations of the card personalization system, specifically, the card printing mechanism of the present application.
Response to Arguments
Applicant's arguments filed 23 December 2025 have been fully considered but they are not persuasive.
Applicant argued that “Given the technology disclosed in Meier, a person of ordinary skill in the art would not turn to the other cited prior art… Meier is directed to a desktop card printer” and “Adding such a mechanism to the Meier desktop card printer would increase the size and cost of the Meier desktop card printer” and finally “Adding a mechanism to Meier that is capable of simultaneously programming integrated circuit chips on multiple cards would not make sense.” Examiner respectfully disagrees on all counts.
In response to applicant's argument that Meier et al. is nonanalogous art with respect to Atlantic Zeiser - WB, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Meier et al. and Atlantic Zeiser – WB both are in the field of the inventor’s endeavor, that being “card personalization.”
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to Applicant’s specific arguments, Examiner respectfully responds that the technological improvement going from producing something individually, one at a time to producing something simultaneously or in parallel is a common and well known step. Modifying a card personalization system with a card feed mechanism as well as other mechanisms as taught by Meier et al. with the equipment or mechanisms or modules that allow for simultaneous production of personalized cards is a natural step of further automation which is well desired in the field for improving throughput of personalized cards [e.g. the queue at the DMV]. Applicant concedes at page 11 that “the system in Atlantic Zeiser-WB is a high-volume card processing system,” while Meier et al. appears to be a high-volume card processing system [i.e. Figure 5 shows a large stack of cards #110 at the card input #102].
Applicant further argues that “a person of ordinary skill in the art would not turn to Jackson and modify Meier with a recirculating system.” Examiner respectfully disagrees. In this case, as previously, Jackson et al. and Meier et al. are analogous art and further automation of Meier et al. for improving throughput of personalized cards is a natural step.
With respect to the dependent claims, no further arguments were presented and therefore the rejection stands.
Conclusion
Examiner's Note: Examiner has cited particular Figures & Reference Numbers, Columns, Paragraphs and Line Numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
THIS ACTION IS MADE FINAL. 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 JOHN P ZIMMERMANN whose telephone number is (571)270-3049. The Examiner can normally be reached Monday-Thursday 0700-1730 EST.
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, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John P Zimmermann/
Primary Examiner, Art Unit 2853