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 1-4, 6-9, and 13, 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 claim 1 and 13 both recite “wherein ablation completely removes pigments to create transparent regions in the processing layer” which contradicts a previous limitation of “the processing layer comprises pigments that are configured to change an appearance, wherein the appearance is at least one selected from the group comprising a translucency, an opacity, a glossiness, and a oolor, upon an irradiation of electromagnetic radiation”. Complete removal is not within the listed changes of appearance.
In respect to claims 1-4 and 6-9, the recitation “wherein ablation completely removes pigments to create transparent regions in the processing layer” is further unclear since it is merely an intended use. It is unclear whether the applicant is claiming the pigments (having a configuration to change appearance) or the absence of the pigments (“complete ablation”) is being claimed, which means the pigments are not even positively recited in the claims.
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 1-4 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Biernacki et al. (US 2019/0315149).
In respect to claims 1, 7, and 9, although indefinite for the reasons stated in the 35 USC 112 rejection above, Biernacki et al. disclose a data carrier comprising: at least one substrate layer 105 (which may be polycarbonate, 0009) and at least one “processing layer” 102, arranged one above the other “overlapping” (Fig. 3); the processing layer (security element) comprises an ink layer comprising pigments and additives, wherein the ink layer comprises may comprise a list of known inks in the art which have polymeric binders (oil-based) “at least in an initial state, dissolved polymers” and the ink layer may be printed in various ways (0011, 0101); the pigments are configured to change appearance upon irradiation of electromagnetic radiation (visible light) to create viewing angle dependent color effects (Abstract). The binder provides sufficient adhesion with the substrate (polycarbonate) (Fig. 3); the pigments are a flat shape with larger diameters than thicknesses (Fig. 3). Although an “ablation” is not required (optional), Biernacki et al. disclose that the change in the processing layer may constitute an ablation i.e. “destroying the color changing effect” (0035).
In respect to the amended subject matter, Biernacki et al. disclose the same structure as claimed. The same type of pigments are capable of being completely removed by ablation, e.g. with a suitably powered laser (see Doerfler, below, for inherency). The amended recitation is an intended use on the structure.
In respect to claim 2, Biernacki et al. disclose pigments, which will intrinsically be either organic, inorganic, or both. Furthermore, “interference film pigments” are well known in the art to include reflection and/or absorber layers which are metals.
In respect to claims 3 and 4, Biernacki et al. disclose that the pigments may be arranged within the processing layer and are oriented parallel to the data carrier and/or substrate layer (Fig. 4).
In respect to claim 6, Biernacki et al. disclose the substrate may comprise polycarbonate layers which are laminated together (Abstract; Fig. 7).
In respect to claim 8, Biernacki et al. disclose a background layer 205 which may be opaque or partially absorbent or extends in a transverse direction under the substrate layer in the same direction (0122; Fig. 7).
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 1-4, 6-9, and 13, are additionally rejected under 35 U.S.C. 103 as being unpatentable over Biernacki et al. (US 2019/0315149) in view of Doerfler (CA 2,671,611).
Biernacki et al. discloses the structure with pigments that are capable of ablation (complete removal), however, do not teach complete ablation of the pigments. However, Doerfler teaches a very similar invention with optically variable pigments which may be changed/altered or else completely eliminated (Abstract; Fig. 1), which may be accomplished by an increased electromagnetic energy (Pg. 9, 1-7). It would have been obvious to provide the processing layer with optical variable pigments taught in Biernacki et al. with a higher laser power, resulting in destruction of the pigments in view of Doerfler to result in “further design possibilities” (Pg. 9, 1-7).
It is further noted that the present application lists a variety of others changes and modifications to the pigment, with destruction just being one option, without any particular specificity. Doerfler teaches these options, as well as a further option of ablation.
Claims 1-4, 6-9, and 13, are additionally rejected under 35 U.S.C. 103 as being unpatentable over Biernacki et al. (US 2019/0315149) and Doerfler (CA 2,671,611) in view of Despland et al. (US 2009/0278345).
Although Biernacki et al. and Doerfler disclose a list of optically variable pigment inks which are known in the art and at least some are believed to be oil-based (“dissolved polymers”), Despland et al. further teach a very similar invention with a similar substrate and processing layer, the processing layer may contain ink layers which comprise binders which may be a polymeric “at least in an initial state, dissolved polymers” and the ink layer may be printed in various ways (0083-0092).
It would have been obvious to provide the inks taught in Biernacki et al. and Doerfler in binders with oil-based “dissolved polymers” in view of Despland et al. 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, selecting between two main types of ink binder, water-based or oil-based. Despland et al. shows examples of oil-based inks used successfully in a very similar invention, wherein such oil-based inks provide readily expected results by one of ordinary skill in the art.
Response to Arguments
The arguments have been adequately addressed in the Final Rejection.
However, in respect to the 35 USC 102 rejection over Biernacki et al., the applicant contends that “inherency requires inevitability” and in response the applicant only claims an intention “complete ablation” (which is also unclear for the 35 USC 102 rejection above). The applicant has provided no structural deference or features of the present application which in some way enables complete ablation that is absent in the prior art. Thus, complete ablation is simply an intention not related to the structural claims. Furthermore, Doerfler (used in the 35 USC 103 rejection) teaches that complete ablation of similar optically variable pigments is possible. In respect to the alleged teachings of Biernacki et al. which comprise “controlled lower energy processing” and “different processing parameters” these are irrelevant to the claimed structure.
In respect to the 35 USC 103 rejection, the applicant contends that Doerfler “contradicts”, “teaches away from” the invention of Biernacki et al. which is not persuasive. Doerfler recites a very similar invention where laser is applied to optically variable pigments which may be “changed/altered” in the same fashion as the present invention, and then further teaches that with energy, the pigment can be completely ablated, for further design possibilities. In no way does this contradict or teach away from Biernacki et al. and rather provides a further teaching of laser energy to the same types of pigments to create further designs. In the same vein, the Doerfler reference provides clear motivation (further design possibilities) and is very clearly solving the same technical problem.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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
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