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 .
Allowable Subject Matter
Claims 1-13 and 15 are allowed.
Claims 14 and 16 are potentially allowable.
The following is a statement of reasons for the indication of allowable subject matter: the aforementioned claims set forth a series of physical structures/configurations that are well beyond that which is disclosed within the previously cited Schmitz and Kaule references, which represents the prior art combination closest to Applicants’ claimed invention, and there would be no obvious reason to modify Schmitz and Kaule to the extent necessary to satisfy each of Applicants’ pertinent limitations.
With respect to independent claims 1, 15 and 16 (and claims 2-4 and 6-14 depending from claim 1), the provision of an IR-absorbing substance having an absorption maximum between 800-1,000nm is well known, but providing such a substance specifically within the context of a security device having a foil carrier that has two opposing surfaces, with each of said surfaces including two machine-readable feature regions (in the particular manner shown in Applicants’ fig. 7A), each of said regions including an IR-absorbing substance therein, wherein at least one of the aforementioned two “machine-readable feature regions” on each surface contains the aforementioned IR-absorbing substance with the absorption maximum between 800-1,000nm, is not disclosed within the pertinent body of prior art, particularly in view of Applicants’ further requirements set forth within the independent claims, including: i) at least one of the two machine-readable feature regions on each surface having its IR-absorbing substance have an remission of 60% or less in the wavelength range between 800nm to 1,000nm (claim 1); ii) at least one of the four machine-readable feature regions being covered at least in part with paper webs or an IR blocker (claim 15); and iii) determining a presence of a feature region containing the IR-absorbing substance with the absorption maximum between 800nm and 1,000nm based on a measured IR signal (claim 16). Note that a modification of Schmitz’s disclosed printing inks 2-5 to accomplish the sophisticated aforementioned configurations would most likely be so extensive that they would alter the inks’ physical nature to such an extent that said inks would no longer have the ability to exhibit their desired optical effects when being checked with infrared radiation in the manners set forth within the reference.
In view of the foregoing, the modifications necessary to satisfy each of Applicants’ claim limitations would be likely to render the Schmitz/Kaule assembly incapable of continuing to operate/behave in the particular manner set forth within the references themselves (given the particularly sensitive nature of such optically sensitive assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
Claim 14 would be allowable if rewritten to overcome the rejection 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 16 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The Office notes that any changes made to the scope of the claimed invention related to the aforementioned claims may potentially necessitate a further search and/or consideration of the pertinent areas of prior art and 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 14 and 16 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.
Claim 14 recites the limitation "the IR radiation being remitted by the security device". There is insufficient antecedent basis for this limitation in the claim. Note that neither claim 14 nor claim 1 (from which it depends) contain any concrete mention of radiation being remitted by the overall security device. The Office acknowledges that claim 1 mentions an IR-absorbing substance having a remission capability/quality when a certain wavelength range is applied to it, but there is no absolute indication that such wavelengths of radiation are actually being applied, such IR radiation is actually “being” remitted, or that the remission is coming from the overall (e.g. all portions of) security device, as opposed to being isolated to said IR-absorbing substance. Accordingly, said recitation of “the IR radiation being remitted by the security device” is deemed to present a deficiency in the claim.
Claim 16 recites the limitation "the IR radiation being remitted by the security device". There is insufficient antecedent basis for this limitation in the claim. Note that no earlier portion of independent claim 16 contains any mention of radiation actually being remitted, or being remitted specifically by the overall security device. Accordingly, said recitation of “the IR radiation being remitted by the security device” is deemed to present a deficiency in the claim.
The Office notes that in the interest of promoting compact prosecution of the instant application, the aforementioned deficiencies may be easily cured by simply cancelling rejected claims 14 and 16.
Response to Arguments
In response to Applicants’ request for withdrawal of the rejection of claims 11-14 and 16 under 35 USC 112 (Arguments/Remarks pg. 6), the Office respectfully encourages Applicants to see the treatment of claims set forth supra.
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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