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 17-27 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 and 23 both recite “wherein the optically variable pigments are distributed uniformly through a volume of the film” which contradicts the disclosure. Figures 2a and 2b disclose distributions of optically variable pigments which would not be considered by one of ordinary skill in the art to be “uniform” which means “1) identical or constant” or 2) “without variations in detail”. Since the plain and ordinary definition of “uniform” is inconsistent, and the Specification only mentions “uniform” once, with explanation or detail to what degree the distribution is “uniform”, thus the term and claim are indefinite and unclear.
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, although indefinite and unclear for the reasons detailed in the 35 USC 112 rejection above, 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 through 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.
In respect to the amended subject matter, 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 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 engraveavble (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 13-15, 17-18, 21-23, and 25-27, are additionally rejected under 35 U.S.C. 103 as being unpatentable over Biernacki et al. (US 2019/0315149) in view of Biernacki et al. (EP 3,342,601).
Although Biernacki et al. disclose a uniformly distributed pigments, more so than the applicant, Biernacki et al. ‘601 disclose similar special effects pigments, and that they are uniformly distributed in a volume of the suspension (0028). It would have obvious to one of ordinary skill in the art to provide the pigments taught in Syrjanen et al. as uniformly distributed in view of Biernacki et al. to provide a uniform color impression (0028).
In respect to claims 17 and 25, Biernacki et al. disclose the optical variable pigments in a printing ink, e.g. “SICPA OVI Gold to Green” (0097), but do not explicitly disclose a particular binder, such as a thermoplastic binder (or particularly one of the litany of different thermoplastic choices claimed) however, it would have been obvious to select one of the many well known thermoplastic binders as binders for the optically variable pigments to form the ink. 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, particularly the use of polymeric binders for suspension of ink particles.
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 12/01/25 have been fully considered but they are not persuasive.
In respect to the 35 USC 102 rejection over Biernacki et al., the applicant summarily contends that Biernacki et al. fails to disclose the added limitations to the independent claims, however, Biernacki et al. disclose the claimed invention as detailed above.
In respect to the 35 USC 103 rejections, the argument against Biernacki et al., the primary reference, are not persuasive as detailed above.
In respect to the 35 USC 112 rejection, the previous rejection has been obviated by amendment. Upon reconsideration, a new 35 USC 112 rejection is applied above.
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