DETAILED ACTION
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the diverging Fresnel lens mirror (claims 25, 29, and 32) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Election/Restrictions
Group VII: Figures 18-19 and 24A-24C were elected on 04/25/25 (inclusion of Figures 24A-24C explained in Non-Final Action 05/08/25).
Independent claims 1 and 19 have been amended to recite features not present in this Group, more specifically Group IX: Figures 21A-21B, which show specific features of the nanoholes and/or the continuous metal layer.
Dependent claims 22-23, 27-28, and 30-31, introduce the same non-elected subject matter.
Thus, claims 1, 5-6, 10, 12, 18-19, 22-23, 27-28, and 30-31, are withdrawn as being directed to a non-elected invention.
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 20-21 and 24-25 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 20 recites “each respective image is displayed at a different viewing angle in two orthogonal directions of tilt”, which conforms with the elected embodiment of Figures 18-19 and 24A-24C. However, the claim additionally recites “each respective image defines a colour-altered version of the same image” which is not supported as an aspect of this embodiment in the Specification. However, the explicit effect of the same image changing color is only discussed as belonging to Figures 8A-8C (Group 1).
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 20-21, 24, and 26, are rejected under 35 U.S.C. 103 as being unpatentable over Borgsmuller et al. (US 2018/0022143) in view of Akhlaghi et al. (US 2020/0341174).
Borgsmuller et al. disclose a security element comprising: a first layer having a first surface and a two-dimensional array of image regions across the first surface, each image region comprising a two-dimensional sub-regions (for displaying images at two different orthogonal directions of tilt) (0101; Fig. 4); the first surface is arranged such that each sub-region has a respective average inclination set to display different images at different viewing angles (specifically, two different orthogonal directions of tilt), in combination (0102; Fig. 4).
Borgsmuller et al. do not disclose that the sub-regions are formed with plasmonic nanostructures to form the respective image, the plasmonic structures of each array of the plasmonic nanostructures varying in at least their shape/size/spacing to provide different colors, however, Akhlaghi et al. teach a very similar invention with a microsurface forming facets for forming different images from different viewing angles (e.g. Fig. 5). The images of the facets being formed from plasmonic nanostructures (0038). These plasmonic nanostructures can be vary in their shape/size/spacing to provide different colored pixels forming a colored image (0034). Akhlaghi et al. further teach that the “displayed contents can be selected by utilization of appropriate plasmonic surface conformed to the micro-surface. The contents can be anything from complex imagery to simple colors. The displayed content can be…simple color shifts or switches…” , thus teaching “each respective image defin[ing] a colour-altered version of the same image i.e. a color switch, explicitly requires at least two colors on an image, and the “color-switch” being an alternation of the color of the same image. It would have been obvious to provide the images of the sub-regions taught in Borgsmuller et al. with plasmonic nanostructure in view of Akhlaghi et al. to provide a colored image on the facets with unusual visual effects for security applications (0009).
Although Akhalghi et al. appears to teach the respective images being the same image with a color switch, the difference in the application and Akhalghi et al. is simply drawn to content of the image i.e. what is being portrayed and “indicia whose primary purpose is the conveying of intelligence or information to a reader is not, without more, functionally related to its substrate.” In re Jones, 373 F.2d 1007, 1012 (CCPA 1967). In the instant case, Akhalghi et al. discloses the same structural means that may convey any image (plasmonic nanostructures) and that any image (color and content) may be created, however, the content, per se, not provide a patentable distinction.
In respect to claim 21, Borgsmuller et al. further discloses that negative space is needed to form the images, e.g. text (Fig. 7a-7h), the negative space being “discontinuities” between the printed regions, wherein the teaching of Akhalghi it substituting plasmonic structures for the printed regions for color effect… thus a teaching of discontinuities between the plasmonic structures in order to form images.
In respect to claims 24 and 26, Borgsmuller et al. further disclose that average inclinations of two opposed sub-regions will both be around 45°, and on opposite sides from open another, thus a difference in average inclination by about 90° (Fig. 5).
Claims 25, 29, and 32, are rejected under 35 U.S.C. 103 as being unpatentable over Borgsmuller et al. (US 2018/0022143) in view of Akhlaghi et al. (US 2020/0341174) and Dehmel et al. (WO 2019/007549).
Borgsmuller et al. and Akhalghi et al. substantially teach the claimed invention, but do not disclose the sub-regions formed of a diverging Fresnel mirror with facets that substantially replication inclinations of a convex surface however Dehmel et al. teach a similar invention with has relief structures similar to convex surfaces taught in Borgsmuller et al. which also have a tilt effect in two orthogonal directions (0011; Fig. 5). As an alternative to a convex surfaces, they may be embodied as diverging Fresnel mirrors. It would have been obvious to provide the first surface, and the sub-regions of the first surface, taught in Borgsmuller et al. and Akhalghi et al. as diverging Fresnel mirrors in view of Dehmel et. al to produce the reflection behavior of a convex surface (0039). Furthermore, 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. Breaking down convex structures into smaller flanks with the same reflection characteristics is well known in the art, in order to reduce the thickness of the device which is an important consideration in elements such as banknotes. It is noted that equal height of facets in Fresnel mirrors is inherent in their design as ascertained by one of ordinary skill in the art.
Claims 20-21, and 24, are additionally rejected under 35 U.S.C. 103 as being unpatentable over Borgsmuller et al. (US 2018/0022143) in view of Akhlaghi et al. (US 2020/0341174) in further view of Holmes (US 2016/0176221).
As detailed above, Akhalghi et al. teach providing the respective images as the same image in different colors. However, Holmes further teaches a tilt image in a lens device, which is similar in respect to two different images being visible from two different angles (in one portion of their device). These tilt images can be the same or related in a variety of ways (0020-0023), in particular, the images may be different colors of the same image (0022). 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 any colored image taught by Akhaghi et al. to include different colors of the same image, to give the illusion of a color-change to any desired image.
Claims 25, 29, and 32, are additionally rejected under 35 U.S.C. 103 as being unpatentable over Borgsmuller et al. (US 2018/0022143), Akhlaghi et al. (US 2020/0341174), and Dehmel et al. (WO 2019/007549), in further view of Holmes (US 2016/0176221).
As detailed above, Akhalghi et al. teach providing the respective images as the same image in different colors. However, Holmes further teaches a tilt image in a lens device, which is similar in respect to two different images being visible from two different angles (in one portion of their device). These tilt images can be the same or related in a variety of ways (0020-0023), in particular, the images may be different colors of the same image (0022). 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 any colored image taught by Akhaghi et al. to include different colors of the same image, to give the illusion of a color-change to any desired image.
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