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 .
Election/Restrictions
Applicant’s election without traverse of Group III in the reply filed on 1/07/2026 is acknowledged.
Claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups I and II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/07/2026.
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.
Claim(s) 14-15, 17, and 19-20 are rejected under 35 U.S.C. 102a1 as being anticipated by Blake et al, US Patent Publication 2015/0152602.
Regarding claim 14, Blake teaches a security document (see title) comprising:
A cellulosic substrate (paper substrate [0103]) comprising a watermark feature [0103 and abstract]; and
A section of micro-optic security thread (see abstract) adhered to the cellulosic substrate [0061-0068],
Wherein the micro-optic security thread comprises:
A polymeric substrate having a first side and second side [0070],
A layer of icon elements disposed on the first side of the polymeric substrate [0070],
A layer of micro-optic focusing elements (microlenses [0062]) disposed on the second side of the polymeric substrate (see figures 2b, 3d and [0044-0045]), and
An embossed portion deflected along an axis normal to the first side of the polymeric substrate relative to a surrounding portion of the micro-optic security thread (described in [0086-0095] and shown in figures 4-6 as the method of making the document so that the security thread 20 is matched with wit raised or recessed areas of the surface of the paper formed by forming cylinder [0086]),
Wherein the embossed portion of the micro-optic security thread covers a portion of the watermark feature [0086].
Regarding claim 15, Blake further teaches that the embossed area has a reduced thickness to be as little as 10-15 microns thick [0067] in comparison to the other areas, and Blake also teaches that the micro-optic device can cover all or part of the watermark in the form of a band, strip, or thread [0066] meaning there is a teaching of the thread in part of the thinner watermarked area and part that is not within the watermark. This is a teaching of embossed portion of the thread being depressed relative to the surrounding portion of the micro-optic thread (in the non-embossed portion where the thread is).
Regarding claim 17, Blake further teaches that the watermark areas formed by the forming roll can be either raised or recessed which will overlap with the security thread 20 [0886].
Regarding claim 19, Blake further teaches that the fibrous sheet material can be blends of cotton and linen [0056].
Regarding claim 20, Blake further teaches that the security elements may also be embossed [0060] and that the polymeric substrate of the security element can be printed on or pitted to create voids or raised structures of up to 8 microns [0070].
While Blake does not explicitly teaches that the indicia is tactile, the act of teaching embossed elements and stating that the elements can have raised or pitted surfaces would read on this limitations of being tactile.
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.
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.
Claim(s) 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Blake et al, US Patent Publication 2015/0152602 in view of Lee et al, USP 4,310,591.
Regarding claims 16 and 18, Blake teaches a thickness difference in the watermark areas of the paper but is silent on a calculatable difference of the depression.
In the same field of endeavor of security paper with embossment and security elements included (see abstract and claim 1), Lee teaches that the embossments of the security paper will have an embossment recess or raised amount of .13-.25 mm (which translates to 0.00512 – 0.00984 inches, see column 5 lines 1-8).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the conventionally known preferred size of embossment as taught by Lee in the Blake paper for the benefit of known the conventionally accepted depth of embossment in the same field of endeavor to produce the same product in a known and conventional manner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748