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 1-9 and 16-17 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.
Independent claim 1 has been amended to recite “wherein the plurality of micro-optical elements and the microparticle layer are configured such that a mean probability P mean for a microparticle being located in a focal volume V focal of a given micro-optical element is lower than 0.9” which is non-enabled by the Specification.
Independent claim 1 also 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 Biernacki et al. (US 2019/0315149).
In respect to claims 1 and 8, although non-enabled for the reasons detailed in the 35 USC 112(a) rejection above, Biernacki et al. disclose an authenticity verification label comprising: a plurality of focusing micro-optical elements 211 (regular lattice pattern) and a microparticle layer 202 (0156; Fig. 16); the microparticle layer 202 comprising a plurality of luminescent particles which are randomly* distributed in the microparticle layer 202 (variant shown as 106) (0105; Fig. 5). *Note: one of ordinary skill readily understands pigments to be randomly distributed microparticles in a binder; they are random as they are suspended with no particular orientation throughout the volume of the binder (Fig. 5).
Biernacki et al. do not disclose a mean probability for a microparticle being located in a focal volume, particularly less than 0.9 or 90%. However, the mean probability, directly depends on the concentration of pigments within the binder. The provision of a relatively low concentration of microparticles (such that the probability of location within the focal volume is less than 90%) is obvious. 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, providing a lower concentration of pigments, at least to fulfill the extremely large range of 0-90% probability with the volume. As is well known in the art, only a sufficient number of pigments within the volume to cause a fluorescent response is needed to execute the invention. Using smaller amounts is obvious at least for the very apparent reason of cost savings.
In respect to claim 2, Biernacki et al. disclose that the focusing micro-optical elements are arranged in a micro-optical element plane and the microparticle layer has a first surface; normal directions of the micro-optical element plane and the first surface are parallel.
In respect to claims 3-5, Biernacki et al. disclose that the focusing micro-optical elements are converging lenses having positive optical power, each having a focal length configured to focus light substantially along the optical axis of the micro-optical element to a focus; the focus is located in the microparticle layer and between a second surface of the microparticle layer opposite the micro-optical elements, thus a distance between the second surface and a principle plane of the micro-optical elements is larger than the focal lengths of each of the micro-optical elements. This is evident since the micro-optical elements are used to focus laser energy into the microparticle layer to mark specific regions of the microparticle layer (0156; Figs. 17-18).
In respect to claims 6 and 16, Bienacki et al. teach the claimed invention for the reasons stated above, 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 fall between 0.01 and 0.06.
In respect to claim 7, Biernacki 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, Biernacki et al. disclose microparticles which may be organic (0098).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Biernacki et al. (US 2019/0315149) in view of Abramenko (RU 2,720,464).
Biernacki et al. discloses 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 Biernacki et al. as “persistent” phosphorescent particles in view of Abramenko to expand the functional capabilities of the luminescent substance (0009).
Response to Arguments
Applicant's arguments filed 03/25/26 have been fully considered but they are not persuasive.
The applicant contends that the added limitation partially from previous claim 6 distinguishes from Biernacki, however, this limitation lacks enablement as detailed in the 35 USC 112(a) above. The limitation was reconsidered when brought into the independent claim, which made consideration of this limitation with all of the dependents a further consideration. Also, new claim 16 provided a very narrow scope of the “mean probability” which required further consideration in respect to the prior art.
Biernacki et al. substantially discloses the invention, but does not disclose elements which are non-enabled by the applicant, a “configuration” to conform to the “mean probability” claimed. This is impossible to ascertain for the reasons stated above. Providing less concentration of microparticles would lower the “mean probability”. Whether this concentration conforms, in particular, to the much less broad ranges such as claim 16 is completely impossible to determine, to a possible infringer, and particularly for the Examiner who cannot even attempt the extreme undue experimentation claimed. Thus, the only alleged distinguishing feature cannot be ascertained.
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 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