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 .
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 1-5 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2012/0295089 to Crawford-Taylor et al. (“Crawford-Taylor”).
Regarding claim 9, Crawford-Taylor anticipates a security element (e.g. laminate sheet 10, as shown in fig. 1 and discussed at para. 17; note that the inclusion of metal or reflective layer 16 imparts security features to the overall laminate sheet 10, rendering it a form of “security element”; also note the title of the invention itself: “Decorative and/or Secure Element for Homogenous Card Construction”) for value documents or security documents (per para. 2, laminated sheets can be used to produce credit cards, identification cards, phone cards, key cards, gift cards, etc.), the security element (10) comprising at least one security feature (e.g. metal or reflective layer 16, which is a security feature per para. 17; also, per para. 26, the sheet 10 may be manufactured using a roll-to-sheet process in which layered security, functional and/or decorative features are applied to a substrate film), wherein the security element (10) comprises: i) at least one recycled material (e.g. metal or reflective layer 16, that can be made from aluminum or a titanium oxide per para. 17; note that page 6, lines 9-16 of Applicants’ filed specification indicates that aluminum and titanium dioxide can be considered recycled metallic materials; also note that MPEP 2111.01 provides that an applicant is entitled to act as his/her own lexicographer), and/or ii) at least one material made of renewable raw materials (e.g. base film 12, that can be compostable per para. 16; note that compostable materials are renewable raw materials), and/or iii) at least one biologically degradable (e.g. base film 12, that is biodegradable per para. 16) and/or iv) marine-degradable material (e.g. base film 12, that can be made from polyhydroxyalkonates per para. 16; note that page 5, lines 1-13 of Applicants’ filed specification indicates that polyhydroxyalkanoates can be considered biologically degradable and/or marine-degradable materials; also note that MPEP 2111.01 provides that an applicant is entitled to act as his/her own lexicographer), wherein the security element (10) is produced with (interpreted by the Office as “including”; thus, see fig. 1) an optically variable (per para. 17, metal or reflective layer 16 can be embossed to produce holographic images; note that holographic images are optically variable) embossing (e.g. aforementioned metal or reflective layer 16) in (e.g. “inside of” or “underneath”; note that claim 15 provides a varnish coating disposed over laminate sheet 10) an embossing varnish (e.g. varnish coating discussed at claim 15) with at least 20% acrylate monomers from renewable raw materials (per para. 16, base film 12 and substrate layer 14 may each include PVC; note that page 8, lines 4-10 of Applicants’ filed specification provides that PVC is suitable as a material for the embossing varnish layer; also note that MPEP 2111.01 provides that an applicant is entitled to act as his/her own lexicographer).
Regarding claim 1, Crawford-Taylor anticipates security element according to claim 9, wherein the at least one recycled material (aforementioned aluminum or titanium oxide of para. 17) and/or the at least one biologically degradable (aforementioned biodegradable base film 12) and/or marine-degradable material (aforementioned polyhydroxyalkonates of para. 16) is at least one recycled metallic material (aforementioned aluminum or titanium oxide of para. 17) selected from the group consisting of silver, copper, aluminum (para. 17), gold, platinum, niobium, tin or nickel, titanium, vanadium, chromium, cobalt and palladium or alloys of these materials, and/or at least one refractive dielectric material with a refractive index of greater than 1.65 selected from the group consisting of zinc sulphide (ZnS), zinc oxide (ZnO), titanium dioxide (TiO2) (para. 17; note that titanium dioxide is encompassed by the “titanium oxide” family), carbon (C), indium oxide (In203), indium tin oxide (ITO), tantalum pentoxide (Ta205), cerium oxide (CeO2), yttrium oxide (Y203), europium oxide (Eu203), iron oxides, iron(II,III) oxide (Fe304), iron(III) oxide (Fe2O3), hafnium nitride (HfN), hafnium carbide (HfC), hafnium oxide (HfO2), lanthanum oxide (La203), magnesium oxide (MgO), neodymium oxide (Nd203), praseodymium oxide (Pr6O11), samarium oxide (Sm203), antimony trioxide (Sb203), silicon carbide (SiC), silicon nitride (Si3N4), silicon monoxide (SiO), selenium trioxide (Se203), tin oxide (Sn02), tungsten trioxide (W03), layers of metal oxides, non- stoichiometric aluminum oxide, copper oxides, or chromium oxides and/or of at least one recycled metallic material from printing inks or varnishes with metallic pigments selected from the group consisting of aluminum, silver, copper, gold, platinum, niobium, tin, or nickel, titanium, vanadium, chromium, cobalt and palladium or alloys of these materials.
Regarding claim 2, Crawford-Taylor anticipates security element according to claim 1, wherein the security element (10) comprises at least 10% of the at least one recycled material (aforementioned aluminum or titanium oxide of para. 17) and/or of the at least one material made of renewable raw materials (aforementioned compostable materials of para. 16) and/or of the at least one biologically degradable (aforementioned biodegradable base film 12) and/or marine-degradable material (aforementioned polyhydroxyalkonates of para. 16) (per written abstract and para. 8, recyclable, biodegradable, degradable and compostable materials may be included as desired).
Regarding claim 3, Crawford-Taylor anticipates security element according to claim 1, wherein the at least one recycled material (aforementioned aluminum or titanium oxide of para. 17), and/or the at least one biologically degradable (aforementioned biodegradable base film 12) and/or marine-degradable material (aforementioned polyhydroxyalkonates of para. 16) is a material lacking any cellulose fibers therein (note the lack of mention of any cellulose within the reference).
Regarding claim 4, Crawford-Taylor anticipates security element according to claim 1, wherein the security element (10) is configured with at least one plastic film (note that polyhydroxyalkonates are a class of biodegradable bioplastics, and as such, the base film 12 in which they are included may be considered an at least minimally “plastic” film) comprising the at least one recycled material (note that the final option of this claim’s “and/or” statement is satisfied) and/or the at least one biologically degradable (note that the final option of this claim’s “and/or” statement is satisfied) and/or marine-degradable material (aforementioned polyhydroxyalkonates of para. 16).
Regarding claim 5, Crawford-Taylor anticipates security element according to claim 1, wherein the at least one recycled material (aforementioned aluminum or titanium oxide of para. 17) and/or the at least one biologically degradable (aforementioned biodegradable base film 12) and/or marine-degradable material (aforementioned polyhydroxyalkonates of para. 16) comprises a chemically recycled plastic and/or a mechanically recycled plastic (e.g. base film 12, which includes polyethylene terephthalate/PET per para. 16; note that page 4, line 27- page 5, line 8 of Applicants’ filed specification indicates that polyethylene terephthalate can be considered a chemically recycled plastic and/or a mechanically recycled plastic; also note that MPEP 2111.01 provides that an applicant is entitled to act as his/her own lexicographer), wherein the at least one recycled material (aforementioned aluminum or titanium oxide of para. 17) and/or the at least one biologically degradable (aforementioned biodegradable base film 12) and/or marine-degradable material (aforementioned polyhydroxyalkonates of para. 16) comprises at least one material selected from the group consisting of polyimide (PI), polypropylene (PP) monoaxially oriented polypropylene (MOPP), biaxially oriented polypropylene (BOPP), polyethylene (PE), polyphenylene sulfide (PPS), polyether ether ketone (PEEK), polyether ketone (PEK), polyethyleneimide (PEI), polysulfone (PSU), polyaryletherketone (PAEK), polyethylene naphthalate (PEN), liquid crystalline polymers (LCP), polyester, polybutylene terephthalate (PBT), polyethylene terephthalate (PET) (para. 16), polyamide (PA), polycarbonate (PC), cycloolefin copolymers (COC), polyoxymethylene (POM), acrylonitrile butadiene styrene (ABS), polyvinyl chloride (PVC) (claim 3) ethylene tetrafluoroethylene (ETFE), polytetrafluoroethylene (PTFE), polyvinyl fluoride (PVF), polyvinylidene fluoride (PVDF), ethylene-tetrafluoroethylene- hexafluoropropylene fluorterpolymer (EFEP), cellulose or lignin-based plastics, polyhydroxyalkanoates (PHA), thermoplastic starch (TPS), polylactic acid (PLA), polycaprolactone (PCL), polybutylene succinate (PBS), and polybutylene adipate terephthalate (PBAT) and/or mixtures and/or co-polymers and/or composites of these materials or is made from at least one of these materials.
Regarding claim 7, Crawford-Taylor anticipates security element according to claim 1, wherein the at least one security feature (16) is formed by an embossed layer (per para. 17, metal or reflective layer 16 can be embossed to produce holographic images), a partially metallized layer (note that metal or reflective layer 16 contains metal therein), a fluorescent layer, a printed layer, a magnetic coding and/or an optically variable and/or optically effective feature (per para. 17, metal or reflective layer 16 can be embossed to produce holographic images; note that holographic images are “optically variable and/or optically effective”), and/or by features that are optically recognizable in transmission or reflection, machine-readable features and/or by electromagnetic wave-absorbing and/or re-emitting substances or features.
Regarding claim 8, Crawford-Taylor anticipates security element according to claim 9, wherein the security element (10) is configured with at least one plastic film (e.g. base film 12, which includes polyethylene terephthalate/PET per para. 16) comprising (e.g. having attached thereto, as shown in fig. 1) the at least one recycled material (aforementioned aluminum or titanium oxide of metal or reflective layer 16, per para. 17) wherein the at least one security feature (16) comprises an optically variable security feature (per para. 17, metal or reflective layer 16 can be embossed to produce holographic images; note that holographic images are “optically variable”), and in that the at least one plastic film (12) comprises a PET film (para. 16), which PET film (para. 16) is produced with at least 50% PCR material (note that page 17, lines 28-30 recites “[t]he plastic film 5 may preferably be configured as a PET film, which is produced with at least 50% PCR material”; also note that MPEP 2111.01 provides that an applicant is entitled to act as his/her own lexicographer; as such, Applicants’ statement appears to assert that all PET films are in fact produced with at least PCR material).
Response to Arguments
In view of Applicants’ claim amendment and in-depth discussion provided within the filed arguments/remarks, the previously issued anticipation-based rejection of claims 1-5 and 7-9 under the Crawford-Taylor reference is restated supra, but in greater detail. Hopefully, this will allow the respective parties to more thoroughly appreciate each other’s positions, and thereby promote the concept of compact prosecution of the instant application.
In response to Applicants’ argument that Crawford-Taylor fails to disclose an embossing varnish with at least 20% acrylate monomers from renewable raw materials (Arguments/Remarks pgs. 5-6), the Office respectfully asserts that as indicated supra, page 8, lines 4-10 of Applicants’ filed specification provides that PVC is suitable as a material for the pertinent embossing varnish layer. Crawford-Taylor para. 16 teaches that base film 12 and substrate layer 14 may each include PVC. In view of the fact that MPEP 2111.01 provides that an applicant is entitled to act as his/her own lexicographer, Crawford-Taylor’s provision of PVC satisfies the pertinent limitation within independent claim 9.
Conclusion
THIS ACTION IS MADE FINAL. 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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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637
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