DETAILED ACTION
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 1-14, 16, and 18-21, are rejected under 35 U.S.C. 103 as being unpatentable over Endres et al. (US 2007/0085337) in view of Muth et al. (US 2010/0295290).
In respect to claims 1-3, 14, 18, and 21, Endres et al. disclose a method of manufacturing a security laminated sheet comprising: a plastic substrate 12 having first and second opposing surfaces; a first concealing region 26 extending between the first and second outer surfaces; a laser markable region at least partially located between the first concealing region 26 and the second outer surface (Fig. 2); and a second concealing region 28 between the laser markable region and the second outer surface; and; the method comprising directing laser radiation from the first surface through the concealing region and onto the laser markable region to form a data element 16 “AB” (Fig. 1); the data element is “hidden from view” by the naked eye in reflected light. It is notable that Endres et al. claim that the data element transforms into a “negative image” in reflected light (Abstract), however this is a condition of direct illumination from the front. The “concealing layers” 26/28 are described as “translucent” (“opaque in other contexts”) (0029), which is further described as “unlike transparent materials, objects located behind translucent maters are perceptible only diffusely or not at all” (0007). Thus, it can be readily inferred that the concealing layers “hide” the data element in at least the circumstances wherein the metal forming the data element is not directly impinged with reflective light. Most importantly, Endres et al. disclose the same structure, including the materials and thicknesses of the “concealing layers” (white polycarbonate, thickness ~150 µm; 0029) as well as the concealed material (metal, aluminum). Endres disclose a first transparent region, transparent layer 30, extending between the first outer surface and the first concealing region that fully covers the first concealing region 26 (Fig. 2).
In respect to the amended subject matter, Endres et al. further disclose providing a print region with at least one other data element 18 onto the front of the card with “any suitable methods” (0028; Fig. 1), but do not explicitly disclose providing the data element within the first transparent region. However, Endres et al. disclose that the opaque layers are polycarbonate, and further that the transparent layers are any suitable plastic, but they also must have the same negligible absorption in the wavelengths used for inscription of the data element (IR range) (0013). Thus, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the present application to select a well-known material, polycarbonate, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. This material is already stated as suitable at least for its non-absorptive properties, and is very common in the art.
As noted above, Endres et al. further disclose that any suitable method for providing the other data element 18 may be used, and Muth et al. further teach a similar invention wherein polycarbonate is inscribed with a laser (UV laser) to form data elements (0018). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the present application to provide the data elements taught in Endres et al. via laser engraving in view of Muth et al. to form data elements that are permanent and harder to tamper (0012). It is readily obvious to one of ordinary skill in the art that engraving involves blackening within the volume.
In respect to claims 4 and 5, Endres et al. disclose that each of the first and second concealing layers may have a transmission of less than 5% (0009) and may comprise substantially opaque polycarbonate (0029). A transmission of 5% is OD = -log(.05) = 1.3, thus they may have optical densities above 1.3.
In respect to claims 6-8, Endres et al. disclose that only a portion of the laser markable layer 20 may be ablated (removed) forming the lighter part (and the surrounding region the “darker part”) (Fig. 2); Endres disclose that the marking layer may be aluminum, which at the thickness discloses (e.g. 5-10 µm), essentially completely blocks light, wherein even a thickness of 0.15 µm has a transmission of about 10^-10 which corresponds to an OD = 10 (See NPL). Thus, regions ablated and absent the aluminum will appear similar to the concealing regions (which can have 10% transmission: OD = 1) which is less than 2.7 (even in combination) and the data element vs surrounding region will “at least 1.5, 1.6, 1.7”.
In respect to claim 9, Endres et al. disclose that the laser markable region extends partially across the concealing regions (Fig. 1).
In respect to claim 10-12, Endres et al. disclose that the marking changes the optical density in forming the at least one data element (to zero, by ablation), and in doing so does not change the optical density of the concealing regions (they do not absorb, 0020).
In respect to claim 13, Endres et al. disclose that the laser markable region is metal (0028).
In respect to claim 16, Muth et al. further teaches providing a window 4 in a similar first concealing region and further data 11 (microwriting) adajacent the window. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the present application to modify the concealing region taught in Endres et al. to include a window in view of Muth et al. to allow for printing through the window to other regions of the sheet (0032).
In respect to claims 19-20, Endres et al. disclose that the at least one data element forms personal data (0015), which is readily obvious to include different personal data across different security sheets.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The 35 USC 112 rejections have been obviated by amendment.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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