DETAILED ACTION
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.
Claim 5 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 phrase "such as" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
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 1-3 and 5-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vincent (US 2012/0182443).
In respect to claims 1, 3, and 6-7, Vincent discloses a data carrier comprising: a carrier body 2; a printing layer “exposure screen” 4 (colored matter formed of printed metallic ink) (0043), and a marking layer “combined images” 3, the printing layer 4 arranged on the top surface of the carrier body 2, and the printing layer 4 arranged above the marking layer 3(Fig. 1); the marking layer 3is configured to be impinged with electromagnetic radiation (laser) such that a marking element is generated (e.g. demetallization) (0121)); both the marking layer 3 and the printing layer 4 may contain reactive elements such that reaction with the electromagnetic radiation, specifically ablation/evaportion “demetallization” (0121).
In respect to the amended subject matter, Vincent discloses that the alignment between the reacted element (printing layer) and the marking elements (marking layer) correspond to a spatial arrangement in the “extension direction” (y-axis) and/or “transverse direction” (x-axis) as can be clearly seen in the Figure 1 which shows a direct “extension direction” alignment between the reacted elements and the marking elements (directly perpendicular alignment, Icon 4) as well as both the “extension direction” and “transverse direction” (diagonal alignments, Icons 1, 2, 3) (Fig. 1).
In respect to claim 2, Vincent discloses a “surface structure” formed of the reacted elements (Fig. 1).
In respect to claim 5, Vincent discloses that the reactive element (printing layer) may be configured to modify propagation of the laser.
In respect to claim 8, Vincent discloses that a grid (“exposure screen”) is formed by the reacted elements (printing layer) (Fig. 2).
In respect to claims 9-10, Vincent discloses that the printing layer and marking layer may be configured such that the marking element and the reacted element are formed simultaneously with the same electromagnetic radiation (laser). In discloses that both may be demetallized (0121), although not explicitly taught as simultaneous, they are capable of being formed as such. 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 11, Vincent discloses that the marking layer and printing layer are arranged at a distance from one another (Fig. 1),
In respect to claim 12-15, Vincent discloses the claimed invention for the reasons stated above. Furthermore, intrinsically the marking element or printing layer must be provided before the other.
In respect to claims 16 and 17, Vincent discloses that the data carrier may comprise banknotes or passports (0049).
Response to Arguments
Applicant's arguments filed 04/20/26 have been fully considered but they are not persuasive.
In respect to Ishida the applicant contends that “the present claims, as amended, require that the reacted element comprises at least one of an ablated element, evaporated element, bulging element, or bubbling element”, however the claim does not require any of these elements, and only requires a single element, including one not mentioned such as bleaching.
“Bleaching” is equivalent to the “discoloration” admitted to be disclosed by Ishida by the applicant: “Ishida consistently describes a color development or discoloration, not physical modification of the material”. Thus, Ishida disclose the claims.
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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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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