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.
Claims 13-15 and 17-28 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 13, 23, and 28, all recite “a film, comprising a carrier material, into a volume of which optically variable pigments are introduced” and further “wherein the optically variable pigments are distributed throughout the volume [thickness, in claim 28] of the film” which is unclear as it directly conflicts with the Specification and Drawings.
The optically variable pigments are not disturbed throughout a volume or a thickness of the film since throughout means: in or to every part of, everywhere in (Dictionary.com). The optically variable pigments are only distributed throughout the carrier material, which comprises only a portion of the film.
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 13-15, 18, 21-23, and 26-27, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Biernacki et al. (US 2019/0315149).
In respect to claims 13, 22, and 23, Biernacki et al. disclose a security feature on an identification document (Fig. 1) comprising: a film 202 and at least one marking 203; wherein the film has optically variable pigments introduced into a volume thereof (Fig. 8). The marking may extend across the optically variable pigments resulting in change in their properties, and a further portion of the marking may include carbonization 210 (0124-0129; Fig. 9). Biernacki et al. disclose that the optically variable pigments are distributed uniformly throughout a volume of the film, as is readily evident by the Figures. In fact, the applicant’s own Figures show a less uniform distribution than Biernacki et al. Because “distributed uniformly” is only mentioned in a single line of the applicant’s Specification, with no qualifying parameters, the Biernacki et al. discloses more uniformity distributed pigments than the applicant, given the plain meaning of the word. Biernacki et al. disclose that an overlay film 208 may be arranged over the film 206 (e.g. Figs 11 or 13); the overlay film may comprise polycarbonate foil which may be engravable or non-engravable (0122); it is further noted that “[d]ue to the subtleness of the interaction of the laser radiation [that marks the marking layer] with the optically variable ink layer of the marking region 202, no unwanted stresses are generated that would affect the structure of the laminated security document 100.”. One of ordinary skill in the art readily understands the difference between an “engraveable” and “non-engraveable” polycarbonate, is the presence of additives. This layer can be used to apply personal data 104 outside the marking region, “preferably by means of laser printing or engraving performed in a layer of the security document 100 that is laser active or sensitive [“laser engravable”] (0095; Fig. 1).
In respect to the amended subject matter, the claimed differences between the prior art cannot be ascertained due to unclear and indefinite language detailed in the 35 USC 112 above. However, Biernacki et al. disclose a carrier material (printed ink) in which the optically variable pigments are distributed throughout.
In respect to claim 14, Biernacki et al. disclose that the change in properties of the variable pigments may be ablation, namely, removal of the optically variable effect (0011).
In respect to claim 15, Biernacki et al. disclose that the film may be formed as an inlay in a recess (Fig. 8). A recess is not shown as a method of formation, however, 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 the instant case the laminated inlay may be alternatively formed by provision in a recess, with the resultant product being the same.
In respect to claim 18, Biernacki et al. disclose a total security feature (film) thickness of 800 µm (0123). The claim does not specify a single film, thus a laminated total film thickness (of which a volume therein contains the optical variable pigments) can properly constitute “a film” since it is integrally combined.
In respect to claim 21, Biernacki et al. disclose that the marking may contain personalization data (0127).
In respect to claims 26-27, Biernecki et al. disclose that the overlay film may be engravable (and thus additive-added) polycarbonate. This layer overlaps the optically variable pigments and does not interfere with the marking as disclosed.
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 19-20 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Biernacki et al. (US 2019/0315149) in view of Bleikolm et al. (US 2011/0215562).
In respect to claims 19-20, Biernacki et al. substantially disclose the claimed subject matter, but do not explicitly disclose details of the optically variable pigments, namely, their concentration or size. However, Bleikolm et al. teach similar optically variable pigments which are present in the volume of a polymeric binder which when applied forms a film (0067); the optically variable pigments may be in concentrations of between 0.1 – 3.0 % (as low as 1.0 %) (0067) and have dimensions of 5-50 µm (0066).
It would have been obvious to one of ordinary skill in the art to provide the optically variable pigments taught in Biernacki et al. at suitable concentrations and sizes as taught by Bleikolm et al. 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, selecting a suitable concentration and size for effects pigments within a binder. One of ordinary skill can weigh optical effect strength vs. cost to decide on the concentration and size. Furthermore, the applicant lists very large ranges of 30x (concentration) and 15x (size), with no specificity.
In respect to claim 24, Biernacki et al. substantially disclose the claimed subject matter, but do not explicitly disclose details of the optically variable pigments, namely, providing them by means of physical vapor deposition, however, Bleikolm et al. teach providing the similar optically variable pigments via a physical vapor deposition process (0059; 0061). It would have been obvious to provide thin layers in the optically variable pigments taught in Biernacki et al. via physical vapor deposition in view of Bleikolm et al. to provide a suitable extremely well-known method of providing thin layers in the art.
Response to Arguments
Applicant's arguments filed 04/16/26 have been fully considered but they are not persuasive.
The amendment contains unclear and indefinite language as detailed above. Since the language attempting to distinguish from the prior art cannot be ascertained, no reasonable comparison to the prior art can be made. However, Biernacki et al. disclose a carrier material (printed ink) in which the optically variable pigments are distributed throughout.
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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