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 1-16 and 18-19 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.
The amended claims do not provide a clear and definite invention.
First, the phrase “non-partially reflecting or absorbing” is ambiguous and could mean either (non-partially reflecting) or (absorbing) or (non-partially reflecting) or (non-partially absorbing). If one states the “red hat or scarf” it could mean either a red hat and scarf or a red and a red scarf. The ambiguous and unclear.
The applicant states however that the “non-partially reflecting or absorbing” is referring the black or “key” ink in the CMYK, however this is not true. Any of the other colors may also be construed as “absorbing” inks (other than white), as they absorb to varying degrees. The recitation does not require absolute or mostly absorbing (K), only some degree of absorption (CYMK). Thus, the recitation “non-partially reflecting [white or black] or absorbing [everything but white]” ultimately does not limit any particular color at all.
The amended subject matter attempts to further limit the “non-partially reflecting or absorbing” ink by stating it “exhibits substantially uniform absorption across the ultraviolet spectrum or exhibits a characteristic partial absorption within a specified ultraviolet range of approximately 365 nm to 395 nm” which again does not further limit any color but white (which is only color with neither characteristics).
The applicant recites “modifying…ultraviolet ink from an original ultraviolet pattern by blending a controlled minimal amount of partially reflecting ink” which is unclear. It is unclear an existing pattern is added to dry printing, blending after wet printing, or else the ink used in creation of the pattern is modified. The “original pattern” is unspecified in the claims, or how it is modified, thus the method step is unclear.
Terms such as “standard indoor illumination” and “maintains an appearance” to “standardized indoor illumination corresponding to office lighting” and “maintains a metameric appearance” do not fix the ambiguity and lack of definiteness of such limitations.
It noted that the applicant states that the “minimal amount” corresponds to a minimal amount to ensure a metameric appearance, however, this is not in the claims. The minimal amount has no modifier in the claim to determine what degree is “minimal”. Then “ensuring that the modification…maintains a metameric appearance” is a separate step not tied to this recitation.
Ultimately the claim recites any color of ink (in a convoluted fashion), modifying any ink in an undefined fashion, to a undefined “minimal” degree, to a subjective standard (a metameric appearance…under standardized indoor illumination corresponding to office light).
Independent claims 7 and 14 at least have some (or all) of the same issues of lack of clarity and definiteness.
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 1-16 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bala et al. (US 8,085,434).
In respect to claims 1 and 5-6, the claims are indefinite for several reasons as detailed in the 35 USC 112(b) rejection above. Because of several reasons of indefiniteness and lack of clarity, it is impossible to accurately compare the claims to the prior art, however, Bala et al. disclose a method of configuring a watermark comprising: producing a metameric pair “original ultraviolet pattern” of a colorant mixture A and colorant mixture B wherein the metameric pair is selected through a metameric pair selector which predicts two colorant mixtures, A and B, which are substantially similar in visible color and also visibly different under UV light (Col. 3, 47-67; Fig. 2).
In an optical step C7, this metameric pair “original ultraviolet pattern” may be modified by a correction factor, which better predicts the actual UV luminesce of the color mixtures (Col. 6, 21 - 57; Fig. 3). This correction factor results in a modification of the original metameric pair “original ultraviolet pattern” which “maintains an appearance of at least two pattern inks of a single/pattern under office lighting” since the correction factor produces a metameric pair which is actually closer in appearance, and thus at least “maintains” the same appearance. When the correction factor is applied, the CMYK values are intrinsically altered, i.e. at least one component color C, M, Y, or K, will be “minimally blended” into the original colorant.
In respect to claims 2-4, Bala et al. disclose that the watermark may be a fluorescent watermark provided on paper (Col. 1, 24-46).
In respect to claims 7-13, the amended claims contain a similar list of problems as indicated in the 35 USC 112. Bala et al. disclose the claimed subject matter, as best can be determined.
In respect to claims 14, 16, and 18, Bala et al. disclose the claimed invention for the reasons stated above, in production of the printed security feature.
In respect to claims 15 and 17, Bala et al. disclose, as best can be determined by the examiner, the invention for the reasons stated above. Regardless, formulations and/or methods of providing the resultant printed security feature are irrelevant. 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 respect to claim 19, Bala et al. disclose the use of the printed security feature as a ticket or other uses (Col. 1, 6-23). Although in the background it is readily inferred that the same watermark technology is an improvement on the watermarks on tickets etc. Regardless, the claim is intended use, as no structural distinction is being claimed.
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 1-13 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Bala et al. (US 8,085,434).
Bala et al. disclose the claimed invention for the reasons stated above, but do not disclose formulating and/or physically printing the unaltered (corrected) inks for the metameric pair, and only disclose predicting a need for a correction factor and then formulating and/or physically printing the corrected inks for the metameric pair (the physical existence of the first printed ink is not considered necessary be the claim language, hence the 35 USC 102 rejection). It would have been obvious to one of ordinary skill in the art to print the unaltered metameric pair in Bala to verify that a correction factor is needed i.e. determine whether the original metameric pair is sufficient for standards determined by the operator.
Response to Arguments
Applicant's arguments filed 11/07/25 have been fully considered but they are not persuasive.
The arguments are not persuasive to overcome the litany of 35 USC 112(b) rejections. The arguments have been previously addressed; however, the applicant now states that the “non-partially reflecting or absorbing ultraviolet” refers to the black (K) component, however this is not pervasive for the reasons stated in the 35 USC 112(b) rejection.
Thus, the modification of a black ink is not required. No distinction from the cited prior art is made, as best can be determined from the Examiner.
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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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.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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