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 12 and 13 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.
Claim 12 recites “partially destroying the metal layer by way of laser radiation or by way of insolation” which is indefinite. The Specification is completely deficient at enabling one in the art to “partially” destroy the metal. The Specification simply restates the claim language without any explanation. Partial destruction could take on many forms, including only penetrating part of the metal layer or softening the metal layer, neither of which are described to enable one of ordinary skill in the art to “partially destroy” the metal.
The claim is further does not enable one to use “insolation” to “partially destroy”, insolation is by definition heating using energy from the sun. There is no disclosure whatsoever how to use energy from the sun to destroy the metal layer at all, let alone “partially destroy” the metal layer.
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 1-7, 9-10, and 12-13, 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 claims 1 and 9 recite several unclear and indefinite recitations drawn to the equation: d =
(
λ
2
+
1
) · y and 2
λ
=
x
y
First, a “scanning pitch x of the movement of the respective laser in one direction” is indefinite. A “scanning pitch”, as illustrated in Figure 6 and as a term known in the art is a distance, particularly drawn to a distance between two adjacent laser markings. However, the claims refer to the scanning pitch as a “movement”, which is unclear and indefinite.
Second, the new recitation “the scanning pitch y, which is related directly to an angle of inclination of the respective laser” is further infinite, as it appears to be confusing the x and y axis between Figures. Figs. 4b and 5b show that the y-axis is horizonal and the x-axis is vertical, which is the opposite of Figure 6. The first two figures are clearly drawn to a horizontal y-axis, since this axis would be affected directly by the angle of the inclination of the laser.
Third, as previously detailed, the applicants own Figures directly contradict their own formal for an allegedly “minimum” diameter. All of Figures 4b, 5b, and 6, the only Figures which show the diameter d of the perforations caused by the laser, all contradict the formula. This has been covered in previous Office Actions, however, generally speaking the diameters are shown barely overlapping (or not overlapping at all), when an example of x = 1 and y = 1 (shown in the Figures) the minimum diameter should be d =
2
= ~1.41 which would be substantial overlap between the perforations.
In respect to new claims 12 and 13, claim 12 recites “partially destroying the metal layer by way of laser radiation or by way of insolation” which is indefinite. It is unclear how one can partially destroy the layer, as this is absent in the Specification. Furthermore, using solar energy for “insolation” is not described, and the method for utilizing is thus unclear.
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, 7, 9-10, and 12-13, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rauch et al. (US 2019/0315150).
In respect to claim 1, although impossible to ascertain for the reasons detailed in the 35 USC 112 rejection above, Rauch et al. disclose a secure document comprising: a metal layer 40 having perforations 42; a lenticular array comprising converging lenses 34 facing the metal layer 40; and a (heat sealing) layer 48, on which the metal layer is arranged*; the metal layer 40 contains perforations 44B (0034-0036; Fig. 2) so to reveal “personalized” images 18A/18B/18C when the document is observed at n angles (e.g. n=3) (Fig. 1); the perforations are contiguous, i.e. in close proximity to allow “visual continuity”; the perforations may be made by laser (Abstract). *[It is noted that the claims do not require direct contact, only “arranged on”. This is further supported by dependent claims disclosing intermediate layers between the metal and transparent layer (e.g. claim 3)].
Rauch et al. do not explicitly disclose that the heat sealing layer 48 is transparent, however this can be readily inferred. Rauch et al. disclose a colored layer 45 to provide a background color for the demetalizations, but provide a further white colored layer below. This colored layer would not serve a purpose if the heat seal layer was opaque. Providing a white layer is likely to blend in with the paper substrate the security element (thread) is woven into (Fig. 1).
In respect to the amended subject matter, possible differences between the present application and the cited prior art which are drawn to the minimum diameter equation cannot be ascertained at this time due to several 35 USC 112 issues, which are detailed above.
In respect 7, Rauch et al. disclose that the lenses may be spherical (0017), and they may represent up to 5 perforation areas (0016), which coincides with the angle range of 14-20°. Furthermore, the incident angle of laser is a product-by-process limitation. 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 claims 9-10, Rauch et al. disclose the claimed invention for the reasons stated above.
In respect to claim 12, although impossible to ascertain for the reasons detailed in the 35 USC 112 rejection above, Rauch et al. disclose the claimed invention for the reasons stated above. The term “partially destroying” is both lacking in enablement and clarity/definiteness, however, the perforations formed in the metal layer only perforate a portion of the metal layer, thus they partially destroy the metal layer.
In respect to claim 13, Rauch et al. further disclose that the lenses may be spherical (0017), and they may represent up to 5 perforation areas (0016), which coincides with the angle range of 14-20°. Since the lens are spherical, the laser angles to perforate the same 5 perforation areas across the bottom of the lens, would require the same angles, as would be deduced by one of ordinary skill.
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 1-5, 7, 9-10, and 12-13, are rejected under 35 U.S.C. 103 as being unpatentable over Rauch et al. (US 2019/0315150) in view of Doublet et al. (US 2014/0175786).
In respect to claim 1, Rauch et al. disclose a secure document comprising: a metal layer 40 having perforations 42; a lenticular array comprising converging lenses 34 facing the metal layer 40; and a (heat sealing) layer 48, on which the metal layer is arranged*; the metal layer 40 contains perforations 44B (0034-0036; Fig. 2) so to reveal “personalized” images 18A/18B/18C when the document is observed at n angles (e.g. n=3) (Fig. 1); the perforations are contiguous, i.e. in close proximity to allow “visual continuity”; the perforations may be made by laser (Abstract). *[It is noted that the claims do not require direct contact, only “arranged on”. This is further supported by dependent claims disclosing intermediate layers between the metal and transparent layer (e.g. claim 3)].
Rauch et al. do not explicitly disclose that the heat seal layer 48 is transparent, however, Doublet et al. teach a similar secure document with a lenticular array and images elements viewable under different tilt angles, wherein a similar underlying layer 6 is a similar heat seal layer (Fig. 2), which may be transparent (0066). It would have been obvious to provide the heal seal layer taught in Rauch et al. as a transparent heat seal layer in view of Doublet et al. as this only amounts to a material choice (wherein numerous, and likely most, heat seal lacquers are transparent) and such a selection of a transparent heat sealing lacquer material would be obvious since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
In respect to claim 2, Rauch et al. do not specify the thickness of the metal layer, however, a selection of 10-20 nm would be 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, using as little material as possible so that demetalization may easily take place and material cost be saved, while still providing reflection. Aluminum is an example metal in Rauch et al. and its reflection characteristics at certain thicknesses is well known. One of ordinary skill readily understands that at thickness of 10nm, aluminum reflects very near full capacity in most of the visible spectrum (See NPL). Any weighing of less material thickness for demetalization/cost can be freely selected with no unexpected result. Furthermore, 10-20 nm is a narrower range than the Specification, with no specificity provided.
In respect to claims 3-5, Rauch et al. disclose a colored layer 45 not perforated by the laser (0037). Although black is not disclosed, it is a colored background layer. In areas without a colored layer (perforations) the white layer 46 is exposed, which would appear white in transmission.
In respect 7, Rauch et al. disclose that the lenses may be spherical (0017), and they may represent up to 5 perforation areas (0016), which coincides with the angle range of 14-20°. Furthermore, the incident angle of laser is a product-by-process limitation. 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 claims 9-10 and 12-13, Rauch et al. in view of Doublet et al. teach the claimed invention for the reasons stated above.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Gregarek et al. (US 2016/0110638) in view of Doublet et al. (US 2014/0175786).
In respect to claim 1, Gregarek et al.. disclose a secure document comprising: a metal layer 36 having perforations (demetalizations); a lenticular array comprising converging lenses 37 facing the metal layer 40; and an (adhesive) layer 15, on which the metal layer is arranged*; the metal layer 36 contains perforations 44B (0034-0036; Fig. 2) so to reveal “personalized” images when the document is observed at n angles; the perforations are contiguous, i.e. in close proximity to allow “visual continuity”; the perforations may be made by laser (Abstract) (0061-0065). *[It is noted that the claims do not require direct contact, only “arranged on”. This is further supported by dependent claims disclosing intermediate layers between the metal and transparent layer (e.g. claim 3)]; Gregarek et al. disclose that the perforations are in direct contact with the adhesive layer, and in between another plastic layer, thus they allow adhesion between the metal layer and adhesive layer.
Gregarek et al. do not explicitly disclose that the adhesive layer 48 is transparent, however, Doublet et al. teach a similar secure document with a lenticular array and images elements viewable under different tilt angles, wherein a similar underlying layer 6 is a similar heat seal layer (Fig. 2), which may be transparent (0066). It would have been obvious to provide the heal seal layer taught in Gregarek et al. as a transparent heat seal layer in view of Doublet et al. as this only amounts to a material choice (wherein numerous, and likely most, heat seal lacquers are transparent) and such a selection of a transparent heat sealing lacquer material would be obvious since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 13 is further rejected under 35 U.S.C. 103 as being unpatentable over Rauch et al. (US 2019/0315150).
Although the anticipation of spherical lenses and five perforations infers the same angle ranges claimed (see above), it would have been obvious angle the lasers at relatively acute angles (14-20° from center, or a total range of 28-40°). 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 relatively acute angles to the normal of the document for laser inscription, since the same angles are utilized for viewing the inscriptions. A smaller range of angles will provide a quicker image shift through less movement (common when holding a document at viewing length).
Response to Arguments
Applicant's arguments filed 12/15/25 have been fully considered but they are not persuasive.
In respect to the 35 USC 112 rejection, the newly amended subject matter creates further issues as detailed above. The applicants’ explanations about how the x and y scanning directions may be different is completely understood by the Examiner, and is not relevant to any of the issues detailed above. It is further understood that a larger y axis component generally results in a larger required diameter so that image gaps are not formed in the tilt image. Again, this does not address any of the issues detailed above.
In respect to the 35 USC 102 and 103 rejections, any alleged distinctions between the present application and the cited prior art cannot be ascertained due to several 35 USC 112 issues.
New claims 12 and 13 are rejected for the reasons detailed above.
Conclusion
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