DETAILED ACTION
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, 31, and 33, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chae et al. (KR 10-2015-0077923) (See NPL for English Translation).
Chae et al. disclose a security feature for a value document comprising: a first layer 230 that is transparent in the visible spectrum, the first layer including the first representation 251; a second laser-sensitive recording layer 240 that is transparent in the visible spectrum, the second layer including the second representation 250; and light-refracting structures 210/221 (“lens raster”) on a first side of the first layer 230 (across spacer 210) (0026; Fig. 3); Chae et al. disclose in the shown embodiment a printed first layer 230, and a laser-sensitive layer 240, however, Chae et al. further disclose that the laser-sensitive layer may comprise multiple laser-sensitive layers, each with a separate marking, thus a disclosure of both a first and second representation made by laser (0036). Chae et al. disclose that the 210 element of the light-diffracting structures contacts the first side of the first layer 230 (Fig. 3) (See Response to Arguments).
Both representations are formed through the light-refracting structures, and thus they are both formed from the same side, thus Chae et al. do not disclose “wherein the second representation is introduced into the second laser-sensitive recording layer with a laser beam from a second direction”, however, although product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, the laser-sensitive layer is capable of being formed from laser energy from the second side.
Claim Rejections - 35 USC § 103
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.
Claims 26-30 are rejected under 35 U.S.C. 103 as being unpatentable over Chae et al. (KR 10-2015-0077923) (See NPL for English Translation) in view of Van Den Berg et al. (WO 2018/093251).
Chae et al. substantially teach the claimed invention, but do not teach the specific printed matter of the first and/or second representations, however, Van Den Berg et al. teach a similar security feature comprising: at least one laser-sensitive recording layer 2, which may be polycarbonate (transparent); light-refracting structures (lenses) 10; and two representations of images 12/13. Van Den Berg et al. that either “positive” (image) is an “increased contrast” biometric representation, inherently in a laser-produced representation, and further that the either representation may be a “contour”; each “positive” (image) may be a portrait, which is a “data related to the value document” (Fig. 3).
It would have been obvious to provide the representations taught in Chae et al. as any desired printed matter, including portraits, personal data, etc. to provide two authentication images which provide personalization, which prevents against forgery (Pg. 3; 6-12).
Claims 32 is rejected under 35 U.S.C. 103 as being unpatentable over Chae et al. (KR 10-2015-0077923) (See NPL for English Translation) in view of Chae et al. (KR 10-2017-0015840).
Chae et al. ‘923 substantially disclose the claimed invention, including the security feature as claimed, but do not disclose providing the security feature within an opening of a value document, however, Chae et al. ‘840 teaches a very similar security feature (Fig. 6), and further providing the security feature within an opening of a value document (Figs. 9-10). The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, incorporation of security features within an opening of a value document, such as a thread or window feature, which are extremely well-known and often utilized in the art.
Response to Arguments
Applicant's arguments filed 11/24/25 have been fully considered but they are not persuasive.
Upon reconsideration of Chae et al., Chae et al. fully discloses or renders obvious the claim language. The recitation added that the “light-diffracting or light-refracting structures arranged on and contacting a first side of the first laser-sensitive recording layer” was previously deemed to overcome the rejection of Chae et al., however, the spacer layer of Chae being the same material can be reasonably construed to be a component of the “light-refracting structure”, and thus in contact with the first laser-sensitive recording layer. This decision was made in light of the applicant’s own light-refracting structures not directly contacting the first laser-sensitive recording layer, as can be seen in Figure 2 (wherein the curves of the lens do not reach the first laser-sensitive recording layer).
Conclusion
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.
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, Daniel Troy, can be reached at 571-270-3742. 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.
/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637