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 .
Specification
The amendment filed on 15 September 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the claim 15 recitation of “wherein the metal coating on the substrate is reacted with an alkaline agent”.
Applicant is required to cancel the new matter in the reply to this Office Action.
Allowable Subject Matter
Claims 1, 3-5, 7, 14 and 41 are allowed.
Claim 20, 23 and 39 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claims 1, 3-5, 7, 14 and 41, Applicants have incorporated the content of previously objected claim 2 into independent claim 1. The previously cited Goetz reference does not teach the requisite coating of aluminum material upon its assembly, and although the newly identified (by reason of Applicants’ amendment to claim 15) Cote reference (discussed in greater detail infra) does teach the use of aluminum, Cote does not teach Applicants’ specific final limitation of “wherein the filmic substrate is aluminum coated”. Note that earlier in the claim, Applicants describe the filmic substrate as already being “metal-coated”, so providing this metal-coated filmic substrate with another overlying aluminum coating pursuant to the now-added final limitation yields an assembly having a substrate with metal coating, thereafter topped by an additional aluminum coating. Cote does not teach this specific multi-layer arrangement.
With regard to claims 20, 23 and 39 (depending from amended claim 15), the claims set forth a series of physical structures/configurations that are well beyond that which is disclosed within the Cote, Goetz and McGee references (discussed in greater depth infra), which represents the prior art combination closest to Applicants’ claimed invention, and there would be no obvious reason to modify Cote Goetz and McGee to the extent necessary to satisfy each of Applicants’ pertinent limitations (specifically with regard to the claimed combinations and arrangements of constituent materials), as such modifications would be likely to render the Cote, Goetz and McGee assemblies incapable of continuing to operate/behave in the particular manners set forth within the references themselves (given the particularly sensitive nature of such chemical resist operation assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
Claims 39 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. See the new matter indicated supra.
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 15, 18, 20-21, 23, 30-31 and 39-40 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.
As indicated in the previously issued Office Action, the claim 15 recitation of “suitable for use as a resist in alkaline de-metallization processing” is unclear, as the exact nature of the “alkaline de-metallization processing” is unknown. Do Applicants actually intend to recite “A water-based alkaline resist composition”? Exactly what structure/configuration is sought? Please review/revise/clarify.
Claim 15 recites the limitations "the metal coating” and “the substrate". There is insufficient antecedent basis for these limitations in the claim.
As indicated in the previously issued Office Action, claims 20 and 39 recite the limitation "the total weight". There is insufficient antecedent basis for this limitation in the claims. Note that a simple amendment to recite “a total weight” would cure this deficiency.
As indicated in the previously issued Office Action, regarding claims 31 and 39-40, the use of words within parentheses renders the respective claims indefinite because it is unclear whether the limitations within said parentheses are actually requisite parts of the claimed invention. Please review/revise/clarify.
Claims 18, 21, 23 and 30 are rejected as depending from rejected independent claim 15.
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 8, 34 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,268,256 to Goetz et al. (“Goetz”).
Regarding claim 8, Goetz anticipates a method (e.g. “process for preparing a photoresist and an article of matter…” discussed at col. 2, lines 55-56) of printing (per col. 9, lines 28-30 and 33-35, a photomask that is on the aforementioned photoresist/article of matter assembly is a film that is printed with a pattern) on (per col. 1, lines 22-24, the aforementioned photoresist is formed upon an electroconductive substrate; note that this electroconductive substrate is thus the aforementioned “article of matter”) a metal-coated filmic substrate (e.g. aforementioned electroconductive substrate discussed at col. 1, line 24; note that by virtue of its “electroconductive” nature, at least a minimal coating of metal will be present thereon; also note that per col. 10, lines 35-37, portions of the substrate are ultimately etched to form a circuit, and as such, may be deemed at least minimally “filmic” in nature) wherein said method (aforementioned “process” of col. 2, lines 55-56) comprises applying (col. 9, lines 33-35; note that the aforementioned pattern is applied/printed onto the aforementioned photomask) a water-based (per col. 2, lines 18-21, the aforementioned photoresist comprises water-dispersible material; as such, it concerns/is “based on” water at least minimally) resist composition (e.g. electrodepositable photoresist composition discussed at col. 1, lines 22-23) onto (col. 1, lines 22-24) the substrate (aforementioned electroconductive substrate), wherein the water-based composition (aforementioned electrodepositable photoresist composition) comprises a cationic acid-soluble resin or a cationic (col. 2, line 40) acid-stabilized (per col. 2, line 39, it is “acid-neutralized”; note that subsequent to such neutralization, the acid level is “stabilized” at substantially zero) resin (per col. 2, lines 37-41, an aqueous dispersion of acid-neutralized amine-functional unsaturated cationic polymeric material may be utilized) and water (per col. 8, lines 37-42, water may be utilized in the electrodepositable photoresist composition as desired), wherein the printing is gravure, flexographic or screen printing (per col. 9, lines 33-35, printing may occur using a negative of the desired image; note that this is a version of screen printing), and wherein the method does not comprise exposing the resist composition (aforementioned electrodepositable photoresist composition) to actinic or infrared radiation (per col. 9, line 66- col. 10, line 1, irradiation can be conducted with ultraviolet light).
Regarding claim 34, Goetz anticipates a printed article prepared by the method of claim 8, which is a security device (e.g. circuit board discussed at col. 1, line 28; note that as indicated supra, the circuit board comprises at a film therein that has been printed with a pattern; also note that such circuit boards may be utilized in many different capacities, including performing security operations).
Regarding claim 37, Goetz anticipates a security device (e.g. circuit board discussed at col. 1, line 28; note that such circuit boards may be utilized in many different capacities, including performing security operations) comprising a metal-coated filmic substrate (e.g. electroconductive substrate discussed at col. 1, line 24; note that by virtue of its “electroconductive” nature, at least a minimal coating of metal will be present thereon; also note that per col. 10, lines 35-37, portions of the substrate are ultimately etched to form a circuit, and as such, may be deemed at least minimally “filmic” in nature) wherein the metal- coated filmic substrate (aforementioned electroconductive substrate) comprises a resist layer (e.g. electrodepositable photoresist composition discussed at col. 1, lines 22-23) derived from a water-based composition (per col. 2, lines 18-21, the aforementioned photoresist comprises water-dispersible material; as such, it concerns/is “based on” water at least minimally) comprising water (per col. 8, lines 37-42, water may be utilized in the electrodepositable photoresist composition as desired) and a cationic acid-soluble resin or cationic (col. 2, line 40) acid-stabilized (per col. 2, line 39, it is “acid-neutralized”; note that subsequent to such neutralization, the acid level is “stabilized” at substantially zero) resin (per col. 2, lines 37-41, an aqueous dispersion of acid-neutralized amine-functional unsaturated cationic polymeric material may be utilized).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 36 and 42 (as amended) are rejected under 35 U.S.C. 103 as being unpatentable over Goetz in view of U.S. Patent No. 5,997,044 to Behm et al. (“Behm”).
Regarding claim 36, Goetz discloses the security device (aforementioned circuit board discussed at col. 1, line 28) of claim 34.
Goetz does not disclose a “security article” comprising said security device (aforementioned circuit board discussed at col. 1, line 28) of claim 34.
Behm teaches the concept of providing a security article (e.g. document discussed at col. 7, lines 40-45; note that per the written abstract, the overall invention concerns the security of such a document) comprising (col. 7, lines 40-45) a security device (e.g. printed electrical circuit discussed at col. 7, lines 42-43).
Given that Goetz ultimately concerns a production of circuit boards (col. 1, lines 27-29) and Behm concerns the application of circuit boards to documents for security enhancement purposes (written abstract), it would have been obvious to a person of ordinary skill in the art before the effective filing date to apply a Goetz circuit board to a Behm security document, in order to provide the benefit of yielding a resultant assembly having a security document that is optimally secure from nefarious counterfeiting attempts.
Regarding claim 42, Goetz in view of Behm discloses the security article of claim 36, wherein the security article (aforementioned document discussed at Behm col. 7, lines 40-45) is a banknote (per Behm col. 64, line 66-col. 65, line 2, the teachings of the Behm invention may be applied to currency security).
Claims 15, 18, 21, 30-31 and 40 (as amended) are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2007/0095929 to Cote et al. (“Cote”) in view of Goetz and further in view of U.S. Patent Application Publication No. 2003/0207121 to McGee (“McGee”).
Regarding claim 15, Cote discloses a water-based (para. 68) resist composition (e.g. chemical resist 26, as shown in fig. 2B and discussed at para. 67 and 73) suitable for use as a resist (para. 30) in de-metallization processing (e.g. removing metal as discussed at para. 30), wherein the metal coating (e.g. metallic portion 28, as shown in fig. 2B and discussed at para. 78) on (fig. 2B) the substrate (16, as shown in fig. 2B and discussed at para. 47-48) is reacted with (para. 73) an agent (e.g. metal reactive solvent discussed at para. 73), said composition (26) comprising: i) a resin (per para. 69, the chemical resist 26 may be a resin); and ii) water (per para. 68, the chemical resist may be water based); iii) wherein the composition (26) is not a photoresist activated by actinic or infrared radiation (note the absence of any mention of a “photoresist” or “actinic/infrared radiation”), and iv) wherein the composition (26) does not comprise a crosslinking agent (note the absence of any mention of crosslinking materials/operations).
Cote does not disclose said de-metallization processing and said agent (aforementioned removal of metal effected via a metal reactive solvent) specifically being an “alkaline” de-metallization processing and an “alkaline” agent.
Goetz teaches the concept of providing an alkaline de-metallization process and an alkaline agent (e.g. implementation of alkaline ammoniacal etchants discussed at col. 10, line 42).
Given that Cote and Goetz both concern chemical etching operations, it would have been obvious to a person of ordinary skill in the art before the effective filing date to incorporate the Goetz alkaline ammoniacal etchant teachings into the Cote metal reactive solvent material, in order to provide the benefit of yielding a resultant Cote etching solvent that is better able to execute fine/precise metal etching operations.
Cote also does not disclose its resin (aforementioned chemical resist resin 26) being a cationic acid-soluble resin, a cationic acid-stabilized resin, or a combination thereof.
McGee teaches the concept of providing a cationic acid-soluble resin, a cationic acid-stabilized resin (per para. 21, cationic emulsion polymers may be employed; the Office notes that pg. 8, lines 10-11 of Applicants’ filed specification specifically indicates that “a cationic acid-stabilized resin is also referred to as a cationic emulsion polymer”), or a combination thereof.
Given that Cote and McGee both concern metal etching operations, it would have been obvious to a person of ordinary skill in the art before the effective filing date to incorporate the McGee cationic emulsion polymer teachings into the Cote chemical resist resin 26 material, in order to provide the benefit of yielding a resultant Cote resist that is better able to facilitate fine/precise metal etching operations.
Regarding claim 18, Cote in view of Goetz and further in view of McGee discloses the composition of claim 15 which does not comprise a photoinitiator (note the absence of any Cote mention of a “photoinitiator”) selected from a thioxanthone, phosphine oxide, quinine, benzophenone, benzoin, acetophenone, benzoin ether, benzil ketal or a combination thereof.
Regarding claim 21, Cote in view of Goetz and further in view of McGee discloses the composition of claim 15, wherein the cationic acid-soluble resin or cationic acid-stabilized resin (Cote 26, as modified in the rejection of claim 15, supra) is solubilized or stabilized with acetic acid (McGee para. 81 and 127) and/or formic acid.
Regarding claim 30, Cote in view of Goetz and further in view of McGee discloses the composition of claim 15 comprising a cationic (McGee para. 22) acid-soluble resin (e.g. amino-functional polymer discussed at McGee para. 57, which is soluble at pH values less than or equal to 8).
Regarding claim 31, Cote in view of Goetz and further in view of McGee discloses the composition of claim 15, wherein the cationic acid-soluble resin is a poly(amino alkyl acrylate) or a poly(amino alkyl methacrylate) (McGee para. 17).
Regarding claim 40, Cote in view of Goetz and further in view of McGee discloses the composition of claim 15, wherein the composition (Cote 26) does not include an IR absorbing material selected from: carbon black, graphite, and combinations thereof; or organic compound(s) selected from poly-(substituted)-phthalocyanine compounds, cyanine dyes, squarylium dyes, chalcogenopyryloarylidene dyes, bis-(chalcogenopyrylo)polymethine dyes, oxyindolizine dyes, bis(aminoaryl)polymethine dyes), merocyanine dyes, quinoid dyes, indolenine dyes, indocyanine dye and combinations thereof (note the absence of any mention of these substances within each of the Cote, Goetz and McGee references).
Response to Arguments
In response to Applicants’ argument that support for Applicants’ amendment to claim 15 can be found on page 9, lines 4-5 of the application as originally filed (Arguments/Remarks pg. 7), the Office respectfully asserts that page 9, lines 4-5 actually mentions an “alkaline reagent”- not the “alkaline agent” that appears within Applicants’ amendment to claim 15. Note that an "agent” is different from a “reagent”. Accordingly, Applicants’ amendment to claim 15 introduces new matter as set forth supra.
In response to Applicants’ argument that with regard to claims 1, 8, 31 and 39-40, the words in parentheses have been deleted (Arguments/Remarks pg. 8), the Office respectfully asserts that as indicated supra, not all words in parentheses have been deleted.
In addition to the foregoing, note that although the previously issued rejections of claims 8, 34 and 37 under Goetz are maintained in the instant Office Action, as a courtesy to Applicants and in the interest of promoting compact prosecution, the Office notes that said claims as well as 36 and 42 (depending therefrom) could also potentially be treated as follows (in view of the Cote and McGee references identified in the search executed in response to Applicants’ now-amended claim 15):
Regarding claim 8, Cote discloses a method (para. 36) of printing (para. 30) on a metal-coated (fig. 2B; note metallic portion 28 coating carrier substrate 16) filmic (fig. 2B) substrate (16, as shown in fig. 2B and discussed at para. 47-48) wherein said method (para. 36) comprises applying a water-based (para. 68) resist composition (e.g. chemical resist 26, as shown in fig. 2B and discussed at para. 67 and 73) onto (fig. 2B) the substrate (16), wherein the water-based composition (26) comprises water (per para. 68, the chemical resist may be water based), wherein the printing (para. 30) is gravure (para. 67), flexographic or screen printing (para. 67), and wherein the method (para. 36) does not comprise exposing the resist composition (26) to actinic or infrared (IR) radiation (note the absence of any mention of actinic or infrared radiation).
Cote does not disclose its water-based composition (26) comprising a cationic acid-soluble resin or cationic acid-stabilized resin.
McGee teaches the concept of providing a cationic acid-soluble resin or cationic acid-stabilized resin (per para. 21, cationic emulsion polymers may be employed; the Office notes that pg. 8, lines 10-11 of Applicants’ filed specification specifically indicates that “a cationic acid-stabilized resin is also referred to as a cationic emulsion polymer”).
For the reasons set forth in the rejection of claim 15, supra, it would have been obvious to incorporate the McGee cationic emulsion polymer teachings into the Cote chemical resist resin material.
Regarding claim 34, Cote in view of McGee discloses a printed article prepared by the method of claim 8, which is a security device (Cote para. 47).
Regarding claim 36, Cote in view of McGee discloses a security article (e.g. banknotes discussed at Cote para. 45) comprising the security device (Cote para. 47) of claim 34.
Regarding claim 37, Cote discloses a security device (e.g. 10, as shown in figs. 2A-C and discussed at para. 47) comprising a metal-coated (fig. 2B; note metallic portion 28 coating carrier substrate 16) filmic (fig. 2B) substrate (16, as shown in fig. 2B and discussed at para. 47-48) wherein the metal- coated filmic substrate (16) comprises a resist layer (e.g. chemical resist 26, as shown in fig. 2B and discussed at para. 67 and 73) derived from a water-based composition (para. 68) comprising water (per para. 68, the chemical resist may be water based).
Cote does not disclose its water-based composition (26) comprising a cationic acid-soluble resin or cationic acid-stabilized resin.
McGee teaches the concept of providing a cationic acid-soluble resin or cationic acid-stabilized resin (per para. 21, cationic emulsion polymers may be employed; the Office notes that pg. 8, lines 10-11 of Applicants’ filed specification specifically indicates that “a cationic acid-stabilized resin is also referred to as a cationic emulsion polymer”).
For the reasons set forth in the rejection of claim 15, supra, it would have been obvious to incorporate the McGee cationic emulsion polymer teachings into the Cote chemical resist resin material.
Regarding claim 42, Cote in view of McGee discloses the security article of claim 36, wherein the security article (aforementioned banknotes discussed at Cote para. 45) is a banknote (Cote para. 45).
Conclusion
Applicant's amendment necessitated the new grounds 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel J. 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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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637
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