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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
The Amendment filed 08/07/2026 has been entered. Claims 1, 3-6, 8-16 remain pending in the application.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: connection device, data device, secure article and data carrier, security element in claim 1 and 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The connection device is interpreted as a tab/hinge (1), a fabric, or one or more layers of different polymers (see instant application U.S PG Pub 20250252223A1 [0030 & 0070-0071] & Figure 1). The data device is interpreted as a data page (2) [0070]. The data carrier (3) and secure article are interpreted as a multi-page article [0033]. The security element is interpreted as element 4 (for example a letter L [0077]) (Figure 5).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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 1 recites the limitation "the data device" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claims 3-6, 8-11 are dependent on claim 1.
Claim 1 also recites the limitation of “at least one data device” in line 7, and it is not clear whether this is a different or separate data device as claimed in line 2 of claim 1, or whether it is the same data device.
Regarding claim 5, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites a broad recitation first, and then the claims also recite ‘preferably’ with a narrower limitation subsequently. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1, 3, 6-13, 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Siebert (EP3626475A2 - see NPL attached).
Regarding claim 1, Siebert discloses a connection device (tab 23), a data device (data page 17), and a security element (66) formed in the connection device through ultrasonic welding [0010 & 0019 & 0028] (see also generally figures 1-2 & [0039]). Siebert also discloses that the tab (23) is seamed by seam (16) to connect the data page (17) into a book block (15) of a document (11) (i.e. secure article) [0039]. Siebert discloses the secure article to be a passport [0039]. Siebert discloses a protruding region (31) that is in the connection device and where the security element is provided [0044 & 0055]. Siebert discloses the data device and connection device being connected (see generally figures 1-2).
Regarding claim 3, Siebert discloses that the security element consists of an embossing by ultrasonic welding by a sonotrode [0054-0056] (Figures 6-7).
Regarding claim 6, Siebert discloses the tab (23) to be made of fabric and yarns (fibers) [0047-0048].
Regarding claim 8, Siebert has disclosed that tab (23) is at least partially embedded in the data device (data page 17) [0039].
Regarding claim 9, Siebert discloses that the security element is provided in the connection device (i.e. element 66 in the tab 23), and this would mean that part of the security element is situation on the date device (data page 17), since the tab (23) is situation in the data page 17 [0039] (figures 1-2).
Regarding claim 10, Siebert discloses the data page 17 to be made of polycarbonate [0025].
Regarding claim 11, Siebert discloses the secure article and data device (11) being a passport [0039].
Regarding claim 12, Siebert has disclosed a method of producing a connection device (tab 23) for connection to a data device and for connecting the data device to a secure article by providing at least one connection device and providing at least one security element in the connection device by ultrasonic welding ([0010 & 0019 & 0028 & 0039]; Figure 1-2 & 6-7).
Regarding claim 13, Siebert discloses a sonotrode with at least one structure to be embossed or debossed into the connection device whereby the security element is generated [0054-0056].
Regarding claim 16, Siebert discloses the method as claimed (see claim 12 rejection above). Further, Siebert discloses that the security element is generated in the tab 23 before connected of the tab to the data page [0054-0056].
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.
Claim(s) 4-5, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Siebert (EP3626475A2 - see NPL attached).
Regarding claims 4-5, Siebert has disclosed that at least one security element (66) is produced, but has also disclosed that it may be a combination of letters, images, symbols [0055], i.e. a plurality of security elements. Further, it is noted that the provision of another security element would merely amount to a duplication of parts, and the courts have held that the duplication of parts is obvious to an ordinarily skilled artisan in the absence of new or unexpected results (MPEP 2144.04 VI (B)). Siebert further discloses that the security elements are formed integrally into the tab 23 [0054-0056]. Further, it can be reasonably expected that since the security elements are formed in one process, that a common sonotrode is used and that the process is carried out simultaneously.
Regarding claim 15, Siebert has disclosed that at least one security element (66) is produced, but has also disclosed that it may be a combination of letters, images, symbols [0055], i.e. a plurality of security elements. Further, it is noted that the provision of another security element would merely amount to a duplication of parts, and the courts have held that the duplication of parts is obvious to an ordinarily skilled artisan in the absence of new or unexpected results (MPEP 2144.04 VI (B)). Further, it can be reasonably expected that since the security elements are formed in one process, that a common sonotrode is used and that the process is carried out simultaneously.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Siebert (EP3626475A2 - see NPL attached) and Michau (WO2016142590A1 - see NPL attached).
Regarding claim 14, Siebert has not explicitly disclosed the specific parameters of the ultrasonic welding, however, this limitation is known from Michau, as explained below.
Michau, drawn also to the art of security document (Abstract), discloses that the ultrasonic welding is performed by a vibration of a sonotrode at a frequency between 20kHz and 70kHz and an amplitude between 10 to 40 um, and further with a time in the order of milliseconds [0030].
It would have been obvious to an ordinarily skilled artisan to have modified the method of Siebert, with the welding being performed with the welding parameters as claimed, as disclosed by Michau, to arrive at the instant invention, in order to be able to create a security motif that resists and remains visible after possible disassembly and reassembly [0014].
Response to Arguments
Applicant's arguments filed 08/07/2026 have been fully considered but they are not persuasive.
Applicant argues that security element is not formed in the protruding region (31) and thus Siebert does not disclose the instant invention.
The examiner disagrees. It is noted that the overlap region (30) which the applicant notes as having the security element (66), is part of the protrusion (31), the protrusion (31) includes the overlap region (30), in short they are one part, as can be seen from figure 2 (30 & 31 are one structure or one part, with the part (30) overlapping and the part (31) not overlapping. Thus, the security element is formed on the protrusion as it is formed on (30), which is a part of the protruding part.
Conclusion
THIS ACTION IS MADE FINAL. 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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
