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 .
Allowable Subject Matter
Claims 2, 6-9, 13 and 19 are allowed.
Claims 5, 17 and 23-25 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the aforementioned claims set forth a series of physical structures/configurations that are well beyond that which is disclosed within the Lister and Adams reference (discussed in greater depth infra), which represent the prior art combination closest to Applicants claimed invention, and there would be no obvious reason to further modify Lister and Adams to the extent necessary to satisfy each of Applicants’ pertinent limitations.
Note that the provision of the claims’ requisite elements by themselves might be known, but providing such elements within the arrangement formed by Lister and Adams would interfere with the ability of the reference’s already existing elements to operate.
In view of the foregoing, the modifications necessary to satisfy each of Applicants’ claim limitations would be likely to render the Lister/Adams assembly incapable of continuing to operate/behave in the particular manners set forth within the references themselves (given the particularly sensitive nature of such secure transaction card assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
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.
Claim 26 is 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 claim 26 recitation of “formed using pointillist artistic techniques” is unclear, as it is unknown exactly which pointillist technique is intended. Exactly what structure/configuration is sought? Please review/revise/clarify.
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.
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.
Claims 1, 3-4, 10-12, 14-16, 18, 20-22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2019/0291498 to Lister (“Lister”) in view of U.S. Patent Application Publication No. 2010/0275259 to Adams et al. (“Adams”).
Regarding claim 1, Lister discloses a transaction card (e.g. identity card discussed at para. 1), comprising: i) at least a first layer (e.g. substrate material 10, as shown in fig. 17c); ii) an underlying layer (e.g. second substrate 19, as shown in fig. 17c) disposed beneath (fig. 17c) the first layer (10); and iii) a discontinuous (fig. 17c) metal stratum (e.g. metal layer 11, as shown in fig. 17c) disposed on a first surface (e.g. lower surface, as shown in fig. 17c) of the layer (10) comprising a plurality (fig. 17c) of discontinuities (e.g. second pattern elements P2), the plurality of discontinuities (P2) and a plurality of non-metal features (e.g. portions of color layer 13 beneath metal layer 11 and second pattern elements P2, as shown in fig. 17c) forming a pattern (fig. 17c) comprising a continuous opaque layer (per para. 176, color layer 13 may be black if so desired) that hides visibility (fig. 17c) of the underlying layer (19).
Lister does not disclose: i) said first layer (10) being a glass layer; and ii) a contact, contactless, or dual interface transaction module being disposed in the first layer (10) and electrically isolated from the discontinuous metal stratum (11).
Adams teaches the concept of providing; i) a first glass layer (e.g. layer forming device 12, as shown in fig. 2A; per para. 303, this may comprise a flexible glass substrate); and ii) a contact, contactless, or dual interface transaction module (e.g. contact pad 46, as shown in fig. 2A) being disposed in (fig. 2A) the first glass layer (aforementioned layer forming device 12).
Given that Lister and Adams both concern secure card assemblies, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the Adams flexible glass substrate and contact pad teachings to the Lister assembly, with the Adams contact pad being disposed on the upper surface of the Lister substrate material 10, in order to provide the benefit of yielding a resultant more flexible and secure Lister assembly, unlikely to be successfully counterfeited.
Regarding claim 3, Lister in view of Adams discloses the transaction card of claim 1, wherein discontinuous metal stratum (Lister 11) comprises a plurality of isolated (Lister fig. 17c) metal features (e.g. individual portions of Lister metal layer 11, as shown in fig. 17c) forming the pattern (Lister fig. 17c).
Regarding claim 4, Lister in view of Adams discloses the transaction card of claim 3, wherein each of the plurality of metal features (aforementioned individual portions of Lister metal layer 11) is separated from adjacent (Lister fig. 17c) metal features (aforementioned individual portions of Lister metal layer 11) by at least a predetermined minimum distance (e.g. width of Lister second elements P2).
Regarding claim 10, Lister in view of Adams discloses the transaction card of claim 1, wherein the discontinuous metal stratum (Lister 11) is disposed on a first outer surface (aforementioned lower surface, as shown in Lister fig. 17c) of the first glass layer (Lister 10).
Regarding claim 11, Lister in view of Adams discloses the transaction card of claim 3, further comprising an electrical isolating material (e.g. Lister second pattern elements P2, as shown in fig. 17c) disposed between adjacent (Lister fig. 17c) metal features (aforementioned individual portions of Lister metal layer 11) in the discontinuous metal stratum (Lister 11).
Regarding claim 12, Lister in view of Adams discloses the transaction card of claim 1, wherein the first layer of glass (Lister 10) comprises a flexible or conformable glass (Adams para. 303).
Regarding claim 14, Lister in view of Adams discloses the transaction card of claim 1, further comprising one or more additional layers (e.g. Lister array 20 of focusing elements 21, as shown in fig. 17c and discussed at para. 177).
Regarding claim 15, Lister in view of Adams discloses the transaction card of claim 14, wherein the one or more additional layers (Lister array 20 of focusing elements 21) is selected from the group consisting of: a printed ink layer, a laminated layer (Lister para. 177), a laser patterned layer, a coated layer, a photolithographic layer, a printed OLED layer, an embedded electronics layer, or a vacuum deposited layer.
Regarding claim 16, Lister in view of Adams discloses the transaction card of claim 1, wherein the discontinuous metal stratum (Lister 11) includes one or more transparent areas (e.g. areas of Lister second pattern elements P2) that permit visibility of an underlying surface or layer (Lister fig. 17c) of the card (aforementioned identity card discussed at Lister para. 1).
Regarding claim 18, Lister discloses a transaction card (e.g. identity card discussed at para. 1), comprising: i) a first layer (e.g. substrate material 10, as shown in fig. 17c); ii) an underlying layer (e.g. second substrate 19, as shown in fig. 17c) disposed beneath (fig. 17c) the first layer (10); and iii) a discontinuous (fig. 17c) metal stratum (e.g. metal layer 11, as shown in fig. 17c) disposed on a first surface (e.g. lower surface, as shown in fig. 17c) of the first layer (10) and comprising a plurality (fig. 17c) of isolated metal features (e.g. individual portions of metal layer 11, as shown in fig. 17c) that form a halftone pattern (fig. 17c) comprising a continuous (fig. 17c) opaque (per para. 176, color layer 13 may be black if so desired) layer (e.g. color layer 13, as shown in fig. 17c) that hides visibility (fig. 17c) of the underlying layer (19).
Lister does not disclose a contact, contactless, or dual interface transaction module disposed in the first layer (10) and electrically isolated from the discontinuous metal stratum (11).
Adams teaches the concept of providing a contact, contactless, or dual interface transaction module (e.g. contact pad 46, as shown in fig. 2A) disposed in (fig. 2A) a first layer (e.g. layer forming device 12, as shown in fig. 2A)
For the reasons set forth in the rejection of claim 1, supra, it would have been obvious to apply the Adams contact pad teachings to the Lister assembly, with the Adams contact pad being disposed on the upper surface of the Lister substrate material 10.
Regarding claim 20, Lister in view of Adams discloses the transaction card of claim 18, wherein the first layer (Lister 10) comprises a non-metal layer (e.g. transparent polymeric material, as discussed at Lister para. 122).
Regarding claim 21, Lister in view of Adams discloses the transaction card of claim 20, wherein the non-metal layer (aforementioned Lister transparent polymeric material) comprises a transparent material (Lister para. 122).
Regarding claim 22, Lister in view of Adams discloses the transaction card of claim 20, further comprising an underlying layer (Lister 19) disposed beneath (Lister 17c) the non-metal layer (aforementioned Lister transparent polymeric material).
Regarding claim 26, Lister in view of Adams discloses the transaction card of claim 1, wherein the pattern (Lister fig. 17c) comprises a visual pattern (Lister fig. 17c) of a plurality (Lister fig. 17c) of metal features (aforementioned individual portions of Lister metal layer 11) formed using pointillist artistic techniques (note that the instant claim is drawn to a transaction card- not a method of forming such), the visual pattern (Lister fig. 17c) comprising a continuous (Lister fig. 17c) opaque (per Lister para. 176, color layer 13 may be black if so desired) layer (e.g. Lister color layer 13, as shown in fig. 17c) that hides visibility (Lister fig. 17c) of the underlying layer (Lister 19).
Response to Arguments
In view of Applicants’ claim amendments, a further search of the pertinent areas of prior art was executed. Within said search, the aforementioned Lister and Adams references were identified. Accordingly, Applicants’ arguments 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.
Applicants are encouraged to see the treatment of claims set forth supra.
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 JUSTIN V LEWIS whose telephone number is (571)270-5052. The examiner can normally be reached M-F 7:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel J. 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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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637
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