DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6-7 and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims recite either “a mean probability” or “probability p of the focal volume V_focal to be occupied by a microparticle”, which are not enabled by the Specification for the reasons stated below.
Independent claim 1 recites “the plurality of luminescent and/or scattering microparticles are randomly distributed in the microparticle layer”, thus, the determination of the mean probability of a microparticle being located in a “focal volume” in a given micro-optical element being lower than 90% inherently requires experimentation i.e. after a randomized distribution, each micro-optical element at each viewing angle of that individual micro-optical element would have be assessed in a experimental run to see if a microparticle is viewable in the micro-optical element. Additionally, as is known in the art, micro-optical elements are traditionally very large in number (1,000s or 10,000s or more), thus in a single experimental run (inherently required since the microparticles are randomized) each of the very large number of micro-optical elements would each have to be individually assessed across their viewing angles to assess whether a microparticle is present. For a single required experiment, this is already considered undue experimentation by the Examiner.
However, the claims recite a “mean probability” which means that several experimental runs (each of which includes assessing each of the micro-optical elements at every viewing angle for a visible microparticle), which further exemplifies the undue experimentation required. A robust and accurate “mean probability” requires a large number of experimental runs.
A possible infringer would have no means to not infringe on the application (if granted), without an incredibly large amount of undue experimentation, such that any statistically meaningful “mean probability” would require a large amount of experimentation runs.
One clear and obvious method of altering the mean probability of a microparticle being visible in a particular micro-optical element would be control of the size and/or concentration of the microparticles, where smaller microparticles and/or smaller concentrations of microparticles are easily controlled without undue experimentation. However, the possible infringer would have no means to determine the correlation between the size and concentration to the “mean probability” without the excessive undue experimentation.
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 1-9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Camus et al. (US 2014/0103632) in view of Karasev (EA 014,011) (See NPL for English Translation).
In respect to claim 1, Camus et al. disclose an authentication verification label (e.g. applied substrate to a banknote) comprising: a plurality of focusing micro-optical elements (microlenses) 33 and a microparticle layer comprising a plurality of luminescent microparticles; Camus et al. discloses that layers 11 and 12 are formed with these microparticles to form e.g. a color impression (0147-0158; Figs. 8-11); these microparticles may be luminescent (e.g. fluorescent) and provide the different color impressions (0039; 0159).
In respect to the limitation “a density and distribution of the microparticles are configured such that, upon illumination, only a subset of the focusing micro-optical elements projects a unique pattern of individual visually distinguishable bright points” is intrinsic in Camus et al. Since the microparticles are random, in that they are simply set in a transparent binder with no particular configuration, each layer 11 and 12 formed of a very large multitude of different microparticles, randomly set, will intrinsically provide a unique pattern i.e. one unique pattern from a first viewing angle (focusing on layer 11) and another unique pattern from a second viewing angle (focusing on layer 12). It is readily ceded by the Examiner that Camus et al. does not disclose or teach viewing of the individual pigments, however, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997). (MPEP 2114). In the instant case, the structure disclosed by Camus et al. is capable of being viewed by a suitable device, e.g. magnifying lens or microscope which would provide enough resolution to view the microparticles individually.
Camus et al. do not teach a dark background behind the luminescent microparticles, however, Karasev teaches a similar authenticity verification device which utilizes luminescence and further teaches that the opaque substrate behind the luminescing feature is dark (0046). It would have been obvious to provide the luminescent microparticles taught in Camus et al. with a dark background in view of Karasev to ensure visualization of the contrasting luminescent microparticles (0046).
In respect to claim 2, Camus et al. disclose that the micro-optical elements are arranged in a plane and the microparticle layer has a first surface facing this plane; wherein the normal direction of the micro-optical element plane and the normal of the first surface are substantially parallel (Fig. 8).
In respect to claims 3-5 and 8, Camus et al. disclose that the focusing micro-optical elements have a converging positive lens, formed in a regular lattice pattern (0148) and a focal length configured to focus light (a refractive lens). These micro-optical elements have a focus in the middle of the thickness of the layers 11/12 containing the luminescent microparticles (0160).
In respect to claims 6 and 16, the claim is not enabled for the reasons stated above, however, Camus et al. teach in free selection of the concentration of microparticles which is satisfactory for ease of identification as well as cost, which depending on the microparticles would be obvious between 0.01 and 0.60. The range is extensive and has absolutely no specificity, with a range of 60x. It is plainly obvious to select a suitable concentration which would fall in this extensive range.
In respect to claim 7, the claim is not enabled for the reasons stated above, however, Camus et al. further do not disclose the fulfillment of the particular equation claimed. However, Biernacki et al. inherently disclose all of the variables, including a microparticle volume Vp, a diameter of the micro-optical element D, a focal length F, a microparticle diameter dp; and a wavelength of light of an illumination device. None of these variables are explicitly quantified, but all intrinsically exist. The equation will be satisfied after a particularly low concentration of pigment particles is provided within the volume. Since this is obvious for the reasons detailed above, the equation would be satisfied in providing a sufficiently low concertation for at least cost concerns.
In respect to claim 9, Camus et al. nor Karasev explicitly teach that the luminescent microparticles are either inorganic or organic, however, this is inherent. These two choices run the gamut of every possible luminescent microparticle.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable Camus et al. (US 2014/0103632) in view of Karasev (EA 014,011) (See NPL for English Translation) and further in view of Abramenko (RU 2,720,464).
Camus et al. in view of Karasev teach that the microparticles are luminescent, specifically fluorescent, but do not explicitly disclose “persistent phosphorescence”, a type of fluorescence. However, Abramenko teaches several types of fluorescent microparticles, including phosphorescent particles (wherein all phosphorescent particles are “persistent” as this term defines the length of emission after the activation energy is removed) (0009). It would have been obvious to one of ordinary skill in the art at the effective filing date of the present invention to provide the fluorescent microparticles taught by Camus et al. in view of Karasev as “persistent” phosphorescent particles in view of Abramenko to expand the functional capabilities of the luminescent substance (0009).
Response to Arguments
Applicant’s arguments with respect to the claims 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Farrall et al. (US 2004/0112962), Haraszti (US 2007/0023494), and Moon et al. (US 2006/0028727) disclose similar inventions. Gaathon et al. (US 2022/0242160), in particular, teaches very similar invention, only essentially differing in lack of use of micro-optical elements (lenses) on the article (lens may be used on the article for scanning).
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
