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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 20 March 2026 has been entered.
Allowable Subject Matter
Claims 1, 4-5, 7, 14-15, 18, 20-21, 30 and 39-41 are potentially allowable.
The following is a statement of reasons for the indication of allowable subject matter: the aforementioned claims set forth method and composition claims including a combination of constituent materials therein that are well beyond that which is disclosed within the Marchant and Oriakhi 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 Marchant and Oriakhi to the extent necessary to satisfy each of Applicants’ pertinent limitations.
With respect to claims 1 and 15 (and claims 4-5, 7, 14, 18, 20-21, 30 and 39-41, depending therefrom), the provision of Applicants’ cited combinations of specific resin materials having particular glass transition temperature qualities is known, but providing such a combination of materials in the Marchant and Oriakhi assembly would likely interfere with the ability of the Marchant/Oriakhi combination to function as originally intended.
In view of the foregoing, the modifications necessary to satisfy each of Applicants’ claim limitations would be likely to render the Marchant/Oriakhi assembly incapable of continuing to operate/behave in the particular manners set forth within the respective references themselves (given the particularly sensitive nature of such metal resist materials), which would be strongly indicative of an application of improper hindsight reasoning.
Claims 1, 4-5, 7, 14-15, 18, 20-21, 30, and 39-41 would be allowable if rewritten or amended 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.
Note that any change to the scope of the claimed invention related to the aforementioned claims may potentially affect the determinations/treatment of claims set forth supra.
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 1, 4-5, 7, 14-15, 18, 20-21, 30 and 39-41 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.
With regard to claims 1, 15 and 39-40, as indicated in the previously issued Office Action, Applicants’ 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. Exactly what structure/configuration/composition is sought? Please review/revise/clarify.
Claims 4-5, 7, 14, 18, 20-21, 30 and 39-41 are rejected as depending (directly or indirectly) from rejected independent claims 1 and 15.
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 8, 34, 36-37 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2011/0239885 to Marchant et al. (“Marchant”) in view of WO 2019/232459 A1 to Oriakhi et al (“Oriakhi”), later published as U.S. Patent Application Publication No. 2022/0154396. Note that all references to Oriakhi herein shall pertain to the United States publication.
Regarding claim 8, Marchant discloses a method (para. 12) of printing (e.g. print processes discussed at para. 45) on a metal-coated (see the presence of metal layer 14 in figs. 11a-c) filmic (para. 51) substrate (11, as shown in figs. 11a-c) wherein said method (para. 12) comprises applying (figs. 11b-c) a resist composition (20, as shown in figs. 11b-c) onto (figs. 11b-c) the substrate (11), wherein the printing (aforementioned print processes) is gravure (para. 46), flexographic or screen printing (para. 46), and wherein the method (para. 12) does not comprise exposing the resist composition (20) to actinic or infrared radiation (note the absence of any mention of actinic or infrared radiation within the reference).
Marchant does not disclose said resist composition (20) being water-based, wherein the water-based composition comprises a cationic acid-soluble resin or a cationic acid-stabilized resin and water.
Oriakhi teaches the concept of providing a composition (e.g. pretreatment composition, as discussed at para. 57) that is water-based (para. 55), wherein the water-based composition (aforementioned pretreatment composition) comprises a cationic acid-soluble resin or a cationic acid-stabilized resin (per para. 57, the pretreatment composition may include a cationic emulsion polymer; note that pg. 8, lines 10-11 of Applicants’ filed specification provides that a cationic emulsion polymer may be utilized) and water (para. 55).
Given that Marchant concerns an operation utilizing a resist layer applied to portions of a metal surface before a demetalization operation is executed on it, and Oriakhi concerns a particular pretreatment composition to be applied to a surface prior to the execution of an operation on it, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the Oriakhi cationic acid-stabilized resin and water teachings to the Marchant resist coating, in order to provide the benefit of yielding a resultant Marchant demetalization operation that removes some metal portions and protects other metal portions with optimal precision.
Regarding claim 34, Marchant in view of Oriakhi discloses a printed (Marchant written abstract and para. 10) article (e.g. Marchant second image 12, as shown in fig. 10) prepared by the method (Marchant para. 12) of claim 8, which is a security device (e.g. security feature, as discussed at Marchant para. 12).
Regarding claim 36, Marchant in view of Oriakhi discloses a security article (Marchant security document, as discussed at para. 39 and shown in fig. 10) comprising the security device (aforementioned security device, as discussed at Marchant para. 12) of claim 34.
Regarding claim 37, Marchant discloses a security device (e.g. security document shown in figs. 5-7 and 10 and discussed at para. 18-20 and 23) comprising a metal-coated (see the presence of metal layer 14 in figs. 11a-c) filmic (para. 51) substrate (11, as shown in figs. 11a-c) wherein the metal- coated filmic substrate (11) comprises (figs. 11b-c) a resist layer (20, as shown in figs. 11b-c).
Marchant does not disclose said resist layer (20) being derived from a water-based composition comprising water and a cationic acid-soluble resin or cationic acid-stabilized resin.
Oriakhi teaches the concept of providing a composition (e.g. pretreatment composition, as discussed at para. 57) derived from a water-based composition comprising water (para. 55) and a cationic acid-soluble resin or cationic acid-stabilized resin (per para. 57, the pretreatment composition may include a cationic emulsion polymer; note that pg. 8, lines 10-11 of Applicants’ filed specification provides that a cationic emulsion polymer may be utilized).
For the reasons set forth in the rejection of claim 8, supra, it would have been obvious to apply the Oriakhi cationic acid-stabilized resin and water teachings to the Marchant resist coating.
Regarding claim 42, Marchant in view of Oriakhi discloses the security article of claim 36, wherein the security article (Marchant security document, as discussed at para. 39 and shown in fig. 10) is a banknote (Marchant para. 79-82).
Response to Arguments
In response to Applicants’ argument that it is clear that “poly(amino alkyl acrylate)” refers to a compound having more than one group that comprises an amino moiety, an alkyl moiety and an acrylate moiety (Arguments/Remarks pg. 9), the Office respectfully encourages Applicants to utilize such clearer “moiety” language within the claims, in lieu of the various recitations of terms within parentheses, provided that the originally filed specification establishes support for such.
Applicants’ arguments with respect to claims 8, 34, 36-37 and 42 have been considered, but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The Office encourages Applicants to see the treatment of claims set forth supra.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637
Prosecution Insights