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
This office action is in response to the Amendment and Remarks filed September 24, 2025 wherein claims 21, 26-27, 31 and 37-40 were amended and new claims 41-45 added. Claims 1-20, 22, 28-30 and 32 have been canceled. Claims 21, 23-27, 31 and 33-45 are pending and considered below.
Claim Objections
Claim 35 was previously objected to because it ended with two periods. The examiner notes that although the claim is not identified as being amended, the extra period has been removed.
Claim Rejections - 35 USC § 112
In view of the amendments to the claims, the previous Section 112 rejections are withdrawn as moot.
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 21, 23-27, 31, 33-39, 41-42 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Arnold, US 2017/0022401 (hereafter Arnold) in view of Dietemann, WO 2015/128806 (hereafter Dietemann), Feldman et al., US 2008/0106002 (hereafter Feldman) and Kumar et al., "UV Curable Coatings: Effect of Diluents Concentrations on Double Bond Conversion and Rate of Photopolymerization," International Journal of Control and Automation, Vol. 13, No. 1, (2020), pp. 611-615, ISSN: 2005-4297 IJCA (hereafter Kumar).
Regarding claims 21 and 38, Arnold teaches a heat-activated adhesive composition and method of using that forms a dry to the touch (i.e., non-tacky) heat sealing adhesive (Abstract and paras [0011]-[0015]). Arnold teaches the adhesive is a heat sealable composition that wets, flows and adheres to a wide range of materials, including plastics (para [0013]). Arnold teaches a method and resulting laminate wherein an adhesive formulation is applied to a cardboard substrate, radiation cured to result in a dry to the touch adhesive, and then contacted with a polyvinyl chloride film or a polypropylene film followed by the application of heat, to result in a heat seal (Abstract and paras [0016]-[0018]). At para [0010], Arnold describes the adhesive as a radiation-curable coating that yields a dry, stackable surface that will not block at temperatures of up to 60°C (i.e., is non-tacky at room temperature), but will rapidly bond when heated to over 100°C and pressed against a surface to be bonded (i.e., the application of heat and pressure).
Adhesive formulations according to Arnold are set forth in Tables 1, 2 and 3, Arnold teaching the primary resin component of the adhesive is an aromatic polyester urethane acrylate oligomer (para [0015]), i.e., a radiation-crosslinkable component.
Arnold further teaches a diluent to speed cure the composition without sacrificing adhesion, such as a hydroxyl acrylate monomer (para [0023]), thus teaching such monomer is a reactive diluent.
Regarding the recitations in claim 21 of a security element "for documents of value" and "suitable for applying the security element to a document of value," these recitations do not limit any structure recited in this product claim, but are rather statements reciting a purpose or intended use. As such, they do not further limit product claim 21. MPEP 2111.02, I and II.
Regarding the recitation of a "security element," this limitation is understood as structure that limits the claim. The specification does not provide a special definition of "security element," thus it must be given its broadest reasonable interpretation in light of the specification. MPEP 2111. The term "security element" is understood as a structure, either visible/tactile, or covert (requiring tools for detection) used to ensure authenticity. It is noted that Arnold, in the "Background of the Invention" discusses water based thermoplastic acrylic formulations that are used as adhesive coatings in layered credit cards (para [0003]), thus teaching one of ordinary skill in the art that the adhesive according to Arnold may be useful in the making of a layered credit card, i.e., a card that includes one or more security elements. However, because Arnold is silent as to any embodiments according to Arnold that include a security element or wherein the adhesive laminate of Arnold is a security element, Dietemann is also being applied against the claims.
Dietemann teaches a security element 1 that includes a plastic support film 3, most often transparent (para [0044]) and preferably made of a synthetic hydrocarbon polymer, such as polyethylene terephthalate (para [0043]), at least one layer of a binder 2, i.e., adhesive, and particles 4 in the binder layer 2 that can be detected by touch (Abstract and Fig. 1). Dietemann further teaches the particles in the binder may, for example be in the form of patterns, providing a touch-detectable security integrated into the binder that makes counterfeiting difficult (paras [0016]-[0027]). Dietemann further teaches that the security element may include a luminescent or magnetic compound that may be in the binder or in other layers (para [0055]). The binder layer of Dietemann is described as including polymers such as polyurethane and acrylic polymer (para [0053]). Dietemann also teaches the binder preferably includes a heat-sealable adhesive (para [0054]). The security element of Dietemann may be used in a variety of secure documents, including banknotes, bank cards, identity cards and passports (para [0106]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the laminate of Arnold that includes a plastics substrate and the non-tacky heat-sealing adhesive of Arnold, to further provide such laminate with structures/features located in or near the adhesive for providing security, such as the particles, luminescent compounds and/or magnetic compounds taught by Dietemann, as predictable and suitable security element structures when it is desired for the laminate of Arnold to be used in a security application, such as any of the secure documents identified in para [0106] of Dietemann, particularly in view of the similarities between the adhesives of Arnold and Dietemann. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Regarding the new recitation in claim 21 (formerly in claim 22, now canceled) of "wherein the reactive diluent is a low molecular weight compound having a molecular molar mass M < 1000 g/mol and is selected from TMP(EO)xTA and DPHA," the reactive diluents taught by Arnold include, inter alia, hydroxyl acrylate monomers and acrylic acid that are both low molecular weight compounds with a molar mass M of less than 1000 g/mol. Arnold however is silent as to the reactive diluent being either ethoxylated trimethylolpropane triacrylate (TMP(EO)xTA) or dipentaerythritol hexaacrylate (DPHA).
Feldman teaches a laminated identification document, i.e., document that includes at least one security element such as an image, made from a plurality of laminated layers wherein at least one of the layers is also described as a "compatibilising layer" (Abstract) or "compatibilized layer" (paras [0024]-[0038]). The compatibilized layer is taught by Feldman to remedy certain problems associated with card structures of the prior art, in particular the minimization or prevention of flex stresses that damage the card and cause cracking (paras [0027]-[0028]). Feldman further teaches that its compatibilizing material system that includes a thermoset material that retains flexibility is resistant to thermal delamination while providing adhesiveness to a variety of films and indicia material used in identification structures (para [0063]). Feldman also states that its compatibilizing layer can serve several functions including an adhesive for bonding layers together, a carrier of dyes and pigments, good adhesion to layers above or below, such as metallic pigments, an impact modifying coating, a print surface leveling agent, a surface tension modifying layer and as a receptor coating for receiving indicia (para [0065]).
A compatibilized layer or layer of Feldman can be partially thermoset and is preferably water based, and/or radiation curable material (para [0053]). The thermoset material or polymer making up the layer is a plastic material that will undergo a chemical reaction, such as crosslinking through heat, radiation or catalysts to form a solid (para [0062]). The compatibilizing layer or layers can be applied as a coating (para [0066]) and utilized in identification documents that include transparent polymer layers, such as polyethylene terephthalate film (paras [0076]-[0077]). The structures of Feldman may be made with a variety of materials including paper and polymers such as polyvinyl chloride, polycarbonate and acrylics (para [0081]). A water based and UV cured multifunctional compatibilizing material of Feldman includes soft and hard polymer components and a radiation curing agent and may be in the form of a solvent based, water based, hot melt or radiation curable compositions with UV curable compositions being preferred because they cure quickly on commercially available equipment (paras [0095]-[0102]). Curable monomers of the composition include polyurethane (meth)acrylates and polyester-urethane acrylates (para [0105]), UV photo initiators (paras [0107]-[0108]) and reactive diluents (paras [0110]-[0113]). Reactive materials may also include amino compounds (para [0118]). Optional components include plasticizers (para [0120]). A particular reactive diluent taught by Feldman is an ethoxylated trimethylol propane triacrylate with number average molecular weights from about 400 to about 2000 from Sartomer (para [0113]), such range overlapping and thus rendering obvious the range recited in claim 21 of molecular mola mass M < 1000 g/mol.
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the adhesive of the security element laminate of Arnold/Dietemann to include ethoxylated trimethylol propane triacrylate as reactive diluent as taught by Feldman for use in its adhesive compatibilizing layer formulation for the advantages of a resulting adhesive layer that provides the advantages taught in Feldman including good adhesive to layers above and below for bonding layers together, a carrier of dyes and pigments, good adhesion to a variety of materials, such as metallic pigments, use as an impact modifying coating, a print surface leveling agent, a surface tension modifying layer and as a receptor coating for receiving indicia.
Regarding the new limitation in claim 21 of "wherein the heat-sealing adhesive contains 5% to 25% of the reactive diluent," Arnold teaches a formulation (Table 3) that includes a hydroxyl acrylate monomer as diluent in the amount of 8 wt.% (para [0023] and Table 3), such value falling within the recited range. However, Arnold does not teach the particular diluent now required in claim 21. Feldman, that teaches TMP(EO)xTA, is silent as to amounts. Therefore, Kumar is being applied against the claims.
Kumar teaches a study of formulations prepared from a prepolymer and various functional diluents, including TMP(EO)xTA (Abstract). The prepolymer is 2,2-bis-[-4-(2-hydroxy-3-acryloxy prop-1-ocy)phenyl] propane (Abstract), i.e., an acrylate/methacrylate monomer that may also be described as a radiation-crosslinkable component. In the experiments, a photoinitiator, "Irgacure 651" was also included in the formulation ((page 611, para 2.1 Materials). The diluent contents tested were 10%, 30% and 50% (see Table 1 at page 612), with diluent functionality and diluent concentration on the percent double bond conversion provided at Table 2., page 613. The study concluded that percent double bond conversion increased with increasing irradiation time as well as diluent concentration and also that the rate of polymerization increased suddenly and then decreased with increasing irradiation time and diluent concentration (page 614, at para 4. Conclusion). Thus, one of ordinary skill in the art is taught by Kumar that the using the diluent TMP(EO)xTA in an amount of from 10% to 50% results in double bond conversion and further that a content between 10% and 30% may provide optimum results, such range overlapping and thus rendering obvious the range of 5% to 25% recited in claim 21.
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the security element of Arnold/Dietemann/Feldman to provide TMP(EO)xTA in a range as taught by Kumar for the advantage of a resulting coating having optimum double bond conversion.
Regarding claim 23, Arnold teaches the inclusion of a plasticizer that preferably has a melting point falling between 50°C and 120°C (para [0014]).
Regarding claim 24, Arnold teaches its plasticizer may be triphenyl phosphate, pentaerythritol tetrabenzoate, or 1,4-cyclohexane dimethanol dibenzoate (para [0014]).
Regarding claim 25, Arnold teaches the plasticizer may be present at concentrations from 1% to 30% by weight, i.e., based on the solids (para [0014]).
Regarding claim 26, see the rejection of claim 21 above and the Arnold teaching that the adhesive composition forms a dry to the touch heat sealing adhesive (Abstract), understood to teach the limitation of "is present in an at least physically dried state."
Regarding claim 27, see Arnold at para [0018] teaching the application of the adhesive of Arnold to a film, i.e., a flat substrate having two opposite main surfaces, wherein at least one main surface of the substrate is at least partly provided with the heat-sealing adhesive that is non-tacky at room temperature.
Regarding claim 31, the aromatic polyester urethane component of the adhesive formulations of Arnold (see Tables 1, 2 and 3 and para [0015]) is understood to be a prepolymer having at least two hydroxyl (OH) groups and a molecular weight of at least 600 g/mol, each example provided in Tables 1, 2 and 3 include the oligomer in an amount falling within the recited range of from 8% to 65%.
Regarding claim 33, please see the rejection of claim 21 above, the adhesives of Arnold (see Tables 1, 2 and 3) including amine functional acrylates understood as cationic.
Regarding claim 34, Arnold teaches the inclusion of a photo initiator at para [0015], and UV curing (i.e., crosslinking) at para [0016], thus teaching its composition/adhesive is crosslinkable. Arnold also teaches the composition/adhesive of Arnold may be electron beam curable by crosslinking using electron beam at para [0015]).
Regarding claim 35, Arnold teaches the inclusion of a photo initiator into its heat-sealing adhesive at para [0015] and in the formulations of Tables 1, 2 and 3.
Regarding claim 36, Arnold is silent as to whether the wide range of materials, including plastics to which the adhesive may be bonded (para [0013]), are transparent. Dietemann teaches that its support or backing film, i.e., substrate, is most often transparent and can carry information (paras [0043]-[0045]), including security elements (paras [0133]-[0134]). It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the security element laminate of Arnold/Dietemann/Feldman/Kumar to include a transparent substrate as predictable and suitable when the laminate is used as a security element as taught by Dietemann and further for the advantages taught in Dietemann of a transparent backing film being capable of including additional security elements which may be visible.
Regarding claims 37 and 39, please see the Section 103 rejection of claim 21 above. Dietemann teaches numerous applications for its security elements, such as equipping a document of value, such as a bank note with the security element/adhesive combination of Dietemann (paras [0002] and [0104]-[0112]. In view of the Arnold teaching that the adhesive of Arnold may be used on a variety of materials, including plastics (para 0013]), and the teaching of application of the adhesive of Arnold on cardboard (para [0016]), and further the discussion in Arnold of using thermoplastic acrylic formulations in heat seal constructions for documents of value, such as credit cards (para [0003]), it would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to utilize the security element laminate of Arnold/Dietemann/Feldman/Kumar on a document of value, such as a banknote, as suitable and predictable. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Regarding claim 38, please see the rejection of claim 21 above.
Regarding claims 41, 42 and 45, Arnold teaches the adhesive composition may include urethane acrylates, such as the product sold under the tradename "PURLAST 100" (para [0020]), which is understood to be an aqueous dispersion, thus the adhesive composition of Arnold may be an aqueous acrylate-containing dispersion.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Arnold/ Dietemann/Feldman/Kumar, as applied to claim 39 and further in view of Borde et al., WO2017174631 (hereafter Borde), discussed with reference to the machine translation of the description thereof.
Regarding claim 40, Arnold teaches a method wherein the adhesive is applied to a first substrate followed by the application of radiation, followed by application of a second substrate, followed by heat seal using heat and pressure (paras [0016]-[0018]). Arnold further teaches that it may be beneficial that at least one of the acrylated components has the ability to crosslink with heat after curing (para [0019]), thus teaching a method wherein crosslinking is performed after heat sealing. The application of heat and pressure is described at para [0010] of Arnold. However, Arnold is silent as to a crosslinking process being performed after heat sealing that is initiated by radiation.
Borde teaches a method for producing a security document wherein first and second thermo-adhesives are applied to a substrate, one adhesive of which being a thermoplastic thermo-adhesive and the other being an ultraviolet-crosslinkable thermo-adhesive, the resulting assembly exposed to heat until the thermo-adhesives soften followed by exposing the assembly to ultraviolet radiation, triggering the crosslinking of the crosslinkable thermo-adhesive (paras [0022]-[0042]). In the method of Borde, the first thermo-adhesive includes a non-polymerizable polyurethane dispersion and the second thermo-adhesive comprises a UV-crosslinkable polyurethane dispersion (paras [0037]-[0039]). Borde teaches that this process is advantageous for obtaining a protected security document which retains its integrity (para [0030]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Arnold/Dietemann/Feldman/Kumar to provide an alternative embodiment wherein, for example, the cross-linkable component is only partially crosslinked prior to heat seal, or an additional cross-linkable polyurethane resin is included in the adhesive formulation, such resin being UV-crosslinkable, such that, rather than heat cure, a second radiation cross-linking may be performed after heat sealing, such a process being a predictable and suitable alternative process in view of the teaching in Borde that documents of value may be protected in a process wherein heat treatment is first performed followed by crosslinking by UV-radiation. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Claims 43 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Arnold/ Dietemann/Feldman/Kumar, as applied to claim 41 and further in view of Seeger et al., US 2021/0086545 (hereafter Seeger).
Regarding claim 43, Arnold is silent as to the adhesive being applied "as a solution based on an organic solvent, the organic solvent comprising at least butyl acetate, propyl acetate or ethyl acetate, in a proportion by weight in a range from 30% to 90%." Feldman, that teaches the inclusion of the reactive diluents trimethylol propane and tri(meth)acrylate and ethoxylated and propoxylated analogues thereof (para [0110]-[0113]), also teaches that its UV-curable compositions can include one or more aqueous and/or organic solvents (para [0104]). However, Feldman is silent as to using "at least butyl acetate, propyl acetate or ethyl acetate."
Seeger is directed to processes for producing strongly adherent films onto flexible substrates that may be in the form of security elements or security documents (Abstract). Seeger teaches using a primer layer to improve adherence between a flexible substrate and an embossed film layer (Abstract). A primer layer according to Seeger includes a radiation-crosslinkable component and may further include a reactive diluent. The primer composition of Seeger includes at least one polyurethane (paras [0049]-[0050]), a polyfunctional polymerizable compound (para [0051]-[0065]) and a solvent (para [0067]). Examples of suitable polyfunctional polymerizable compounds include trimethylolpropane triacrylate and dipentaerythritol hexaacrylate (para [0061]). A list of suitable solvents includes ethyl acetate, propyl acetate and butyl acetate (para [0067]) in a proportion of 90.0 to 99.5% by weight (para [0069]), such range overlapping and thus rendering obvious the recited range. The primer of Seeger may be applied to the substrate by means of processes selected from slot die-, knive-, reverse roll- metering rod coating, gravure-, flexo-, screen-, or ink jet printing (para [0022]). The solvent is evaporated by applying IR-radiation and/or thermal drying and then cured by means of UV/VIS radiation or electron beam (para [0011]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Arnold/ Dietemann/Feldman/Kumar to suitably use solvents and their amounts as taught by Seeger in view of the compositional similarities of the Seeger primer and the composition of Arnold/Dietemann/Feldman/Kumar and for the advantage of being able to apply such composition to a substrate according to the wide variety of methods taught in Seeger including slot die-, knive-, reverse roll- metering rod coating, gravure-, flexo-, screen-, and/or ink jet printing.
Regarding claim 44, Arnold teaches the inclusion of an aromatic polyester urethane component (see Tables 1, 2 and 3 and para [0015]) that is understood to be a prepolymer having at least two hydroxyl (OH) groups and a molecular weight of at least 600 g/mol, each example provided in Tables 1, 2 and 3 include the oligomer in an amount falling within the recited range of from 8% to 65%.
Response to Arguments
Applicant’s arguments with respect to claim 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746