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 .
Claim Objections
As indicated in the previously issued Office Action, claim 15 is objected to because of the following informalities: the claim contains a plurality of capitalized words throughout the claim. Note that a claim should only contain one capitalized word, at its beginning. Appropriate correction is required.
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 1-7, 9-15 and 17-18 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.
The claim 1 recitation of “[a] data carrier for a secure article comprising: …” is unclear, as it is unknown whether the claimed data carrier or the claimed secure article should comprise the list of elements that follow. Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 4 recitation of “the surface structure pitch being equal or different from a line width” is unclear, as it is unknown exactly how a pitch may be quantifiably compared to each other. Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 4 recitation of “a line width defined by the printing resolution” is unclear, as it is unknown exactly how a printing resolution can “define” a line width. Exactly what structure/configuration is sought? Please review/revise/clarify.
Claim 15 recites the limitation "the step of providing at least one marking material…". There is insufficient antecedent basis for this limitation in the claim.
The claim 15 recitation of “wherein the step of providing at least one marking material…” is unclear. Do Applicants actually intend to recite, “further comprising a step of providing at least one marking material…”? Exactly what structure/configuration is sought? Please review/revise/clarify.
Claims 2-3, 5-7, 9-14 and 17-18 are rejected as depending (directly or indirectly) from independent claims 1 and 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 1-7, 9-10, 14-15 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2007/0246932 to Heine et al. (“Heine”).
Regarding claim 1, Heine anticipates a data carrier (1, as shown in fig. 1 and discussed at para. 108) for a secure article (e.g. a bank note, per para. 108) comprising: i) a carrier body (e.g. surface of data carrier 1 shown in fig. 1); and ii) at least one security element (e.g. optically variable structure 3, as shown in fig. 1 and discussed at para. 109; per para. 39, optically variable structure 3 forms a security element) being provided on (fig. 1) the carrier body (aforementioned surface of data carrier 1); wherein iii) the security element (3) comprises at least one surface structure (e.g. embossed structure 4, as shown in fig. 2 and discussed at para. 115) extending along (compare figs. 1-2) at least one extension direction (E) (e.g. width dimension, as shown in figs. 1-2) and at least one print (e.g. coating 7, as shown in figs. 2 and 4, and discussed at para. 115 and 118; per para. 17, coating 7 may be printed) being at least partially arranged on (fig. 2) the surface structure (4), iv) wherein the security element (3), in a region (fig. 2) of the surface structure (4), is configured to exhibit different appearances (A1; A2) (e.g. appearance in which parts of coating 7 become visible and appearance in which parts of coating 7 become concealed, as discussed at para. 1) when being observed under different viewing angles (α1; α2) (e.g. oblique viewing and perpendicular viewing, as discussed at para. 1), and v) wherein the data carrier (1) further comprises at least one marking material (embossed elements 5, as shown in figs. 3 and 5, and discussed at para. 115; per para. 128, such embossed elements 5 may be produced/marked via laser engraving) being configured to interact with (i.e. be engraved by, per para. 128) impinging laser radiation (e.g. laser engraving discussed at para. 128), and wherein the surface structure (4) corresponds to (fig. 3 and para. 128; also see the definition of “corresponds to” provided at pg. 12, lines 29-32 of Applicants’ filed specification) a laser marking (e.g. circular areas 8 and squares 9, together, as shown in fig. 4-5 and discussed at para. 118) being generated in (figs. 4-5 and para. 128) the marking material (5).
Regarding claim 2, Heine anticipates the data carrier according to claim 1, wherein the surface structure (4) comprises elevations (e.g. upper surface of embossed elements 5, as shown in fig. 2) extending away from (compare figs. 1-2) the carrier body (aforementioned surface of data carrier 1); and/or depressions extending towards the carrier body.
Regarding claim 3, Heine anticipates the data carrier according to claim 2, i) wherein a distance (d) between and/or a surface area of and/or a slope of the elevations (aforementioned upper surface of embossed elements 5) remains constant (fig. 2) or changes with respect to the extension direction (E) (aforementioned width dimension), and/or ii) wherein a distance between and/or a surface area of and/or a slope of the depressions remains constant or changes with respect to the extension direction (E).
Regarding claim 4, Heine anticipates the data carrier according to claim 3, wherein the surface structure (4) has a surface structure pitch (e.g. steepness/slope, as shown in fig. 2) and wherein the print (7) has a printing resolution (e.g. printed elements per unit of space, as shown in figs. 2 and 4-5), the surface structure pitch (aforementioned steepness/slope) being equal or different from (compare lines 2 and 4-5) a line width (e.g. width of lines of coating 7 shown in fig. 2) defined by (fig. 2) the printing resolution (aforementioned printed elements per unit of space).
Regarding claim 5, Heine anticipates the data carrier according to claim 1, i) wherein the print (7) comprises at least a first colour (e.g. cyan within circular areas 8, as shown in fig. 4 and discussed at para. 118), and ii) wherein a density of the first colour on the surface structure remains constant or varies with respect to the extension direction (E), and/or iii) wherein the first colour (aforementioned cyan within circular areas 8) and the surface structure (4) are arranged in a spatial relationship with one another (compare figs. 2 and 4).
Regarding claim 6, Heine anticipates the data carrier according to claim 1, i) wherein the print (7) comprises at least a first colour (e.g. cyan within circular areas 8, as shown in fig. 4 and discussed at para. 118) and a second colour (e.g. magenta within squares 9, as shown in fig. 4 and discussed at para. 118) being different from (note that magenta is different from cyan) the first colour (aforementioned cyan), and ii) wherein a density of said first colour (aforementioned cyan) on the surface structure (4) equals or differs from (compare figs. 2 and 4) a density of said second colour (aforementioned magenta) on the surface structure (4) with respect to the extension direction (E) (aforementioned width dimension).
Regarding claim 7, Heine anticipates the data carrier according to claim 1, i) wherein an image (e.g. combination of circular areas 8 and squares 9, as shown in fig. 4) and/or an alphanumeric character to be printed as the print (7) in an initial state before being printed on the surface structure (4) is associated with an initial appearance (fig. 4) being provided by at least a first colour (e.g. cyan within circular areas 8, as shown in fig. 4 and discussed at para. 118) and a second colour (e.g. magenta within squares 9, as shown in fig. 4 and discussed at para. 118), and ii) wherein the first colour (aforementioned cyan) and the second colour (aforementioned magenta) are arranged on (compare figs. 2 and 4) the surface structure (4) with different densities (compare figs. 2 and 4) such, that the security element (3) exhibits an appearance (e.g. appearance displaying only circular areas 8) corresponding to the initial appearance (fig. 4) when being observed under a first viewing angle (aforementioned oblique viewing) while exhibiting a different appearance (e.g. appearance displaying only squares 9) when being observed under a different viewing angle (aforementioned perpendicular viewing).
Regarding claim 9, Heine anticipates the data carrier according to claim 1, i) wherein the carrier body (aforementioned surface of data carrier 1) and/or the surface structure (4) comprises or consists of one or more paper-based compounds (para. 44) and/or one or more cardboard-based compounds (para. 126) and/or one or more plastics (para. 44, 126 and 147) and/or one or more polymers, and/or ii) wherein the surface structure corresponds to a print.
Regarding claim 10, Heine anticipates the data carrier according to claim 1, i) wherein the data carrier (1) defines a top side (e.g. side facing forward in fig. 1), and ii) wherein the security element (3) is provided on (fig. 1) the top side (aforementioned side facing forward in fig. 1) of the data carrier (1).
Regarding claim 14, Heine anticipates the data carrier according to claim 1, wherein the data carrier (1) forms part of a secure article (e.g. security documents discussed at para. 43), the secure article (aforementioned security documents) constituting one of: an identity card (e.g. ID cards discussed at para. 43), a passport (para. 43), a credit card (para. 43), a smart card, a driving licence, or a data page.
Regarding claim 15, Heine anticipates a method of producing (claim 32) a data carrier (1, as shown in fig. 1 and discussed at para. 108) for a secure article (e.g. a bank note, per para. 108) suitable for use as a passport (para. 43 and 108), wherein the method (claim 32) comprises the steps of: i) Providing a carrier body (e.g. surface of data carrier 1 shown in fig. 1); and ii) Providing at least one security element (e.g. optically variable structure 3, as shown in fig. 1 and discussed at para. 109; per para. 39, optically variable structure 3 forms a security element) on (fig. 1) the carrier body (aforementioned surface of data carrier 1); iii) wherein the security element (3) comprises at least one surface structure (e.g. embossed structure 4, as shown in fig. 2 and discussed at para. 115) extending along (compare figs. 1-2) at least one extension direction (E) (e.g. width dimension, as shown in figs. 1-2) and a print (e.g. coating 7, as shown in figs. 2 and 4, and discussed at para. 115 and 118; per para. 17, coating 7 may be printed) being at least partially provided on (fig. 2) the surface structure (4), iv) wherein the security element (3), in a region (fig. 2) of the surface structure (4), is configured to exhibit different appearances (A1; A2) (e.g. appearance in which parts of coating 7 become visible and appearance in which parts of coating 7 become concealed, as discussed at para. 1) when being observed under different viewing angles (α1; α2) (e.g. oblique viewing and perpendicular viewing, as discussed at para. 1), and v) wherein the step of providing at least one marking material (embossed elements 5, as shown in figs. 3 and 5, and discussed at para. 115; per para. 128, such embossed elements 5 may be produced/marked via laser engraving) being configured to interact with (i.e. be engraved by, per para. 128) impinging laser radiation (e.g. laser engraving discussed at para. 128) on the carrier body (aforementioned surface of data carrier 1) and generating (fig. 3 and para. 128) the surface structure (4) as a laser marking (e.g. circular areas 8 and squares 9, together, as shown in fig. 4-5 and discussed at para. 118) by irradiating laser radiation onto (para. 128) the marking material (5).
Regarding claim 17, Heine anticipates the method according to claim 15, further comprising the step of embossing (para. 115) a structure (aforementioned embossed structure 4) on a lamination plate (e.g. plate surface discussed at para. 47) into a surface (e.g. surface of data carrier 1 shown in fig. 1) of the carrier body (aforementioned surface of data carrier 1) and generating the surface structure (4) as embossing (para. 115), wherein the print (7) and the embossing (para. 115) are each generated from a same data set (e.g. data defining configuration shown in fig. 2), the data set (aforementioned data defining configuration shown in fig. 2) being input to a printer (e.g. printing mechanism performing operations described at para. 45) and a lamination device (e.g. device performing lamination operation discussed at para. 126) comprising the lamination plate (aforementioned plate surface discussed at para. 47).
Regarding claim 18, Heine anticipates the method according to claim 15, further comprising the step of printing (para. 45), the surface structure (4) onto the surface (e.g. surface of data carrier 1 shown in fig. 1) of the carrier body (aforementioned surface of data carrier 1).
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 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Heine.
Regarding claim 11, Heine discloses the data carrier according to claim 1, but does not disclose at least one further surface structure being different from the surface structure (4), and wherein the print (7) is furthermore at least partially arranged on said further surface structure.
However, it has been held that a mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In the instant matter, providing additional instances of Heine’s embossed structure 4 would simply affect the aesthetic presentation of information as desired.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the Heine data carrier (1) with a secondary instance of the optically variable structure (3) with its embossed structure (4) and coating (7) thereon, in order to provide the benefit of yielding a resultant assembly presenting an aesthetic appearance as desired.
Regarding claim 12, Heine discloses the data carrier according to claim 11, i) wherein the further surface structure (aforementioned secondary instance of embossed structure 4) extends along the extension direction (E) (aforementioned width dimension) or along at least one further extension direction (E') being different from the extension direction (E) (aforementioned width dimension), and/or ii) wherein the further surface structure (aforementioned secondary instance of embossed structure 4) comprises further elevations (e.g. upper surface of embossed elements 5, as shown in fig. 2) extending away from (compare figs. 1-2) the carrier body (aforementioned surface of data carrier 1) and/or further depressions extending towards the carrier body with respect to the further extension direction (E'), and wherein at least one of a distance, a surface area, a slope, a cross-section (fig. 2) or a surface structure pitch (steepness/slope, as shown in fig. 2) of the further elevations (aforementioned upper surface of embossed elements 5) and/or of the further depressions equals (note that in the modification set forth in the rejection of claim 11, supra, a mere duplication of the Heine optically variable structure 3 was added) or differs from at least one of the distance, the surface area, the slope, the cross-section (fig. 2) or the surface structure pitch (steepness/slope, as shown in fig. 2) of the elevations (aforementioned upper surface of embossed elements 5) and/or of the depressions of the surface structure (aforementioned initial instance of embossed structure 4).
Regarding claim 13, Heine discloses the data carrier according to claim 11, i) wherein the print comprises at least a first colour, and wherein a density of the first colour on the surface structure with respect to the extension direction (E) equals or differs from a density of the first colour on the further surface structure with respect to the extension direction (E) and/or a further extension direction (E'), and/or wherein ii) the print (7) comprises at least a first colour (e.g. cyan within circular areas 8, as shown in fig. 4 and discussed at para. 118) being arranged on (compare figs. 2 and 4) the surface structure (aforementioned initial instance of embossed structure 4) and a further colour (e.g. magenta within squares 9, as shown in fig. 4 and discussed at para. 118) being arranged on (compare figs. 2 and 4) the further surface structure (aforementioned secondary instance of embossed structure 4), the first colour (aforementioned cyan) and the further colour (aforementioned magenta) differing from one another (note that cyan and magenta are different colors).
Response to Arguments
In view of Applicants’ claim amendments (including but not limited to deletions of limitations calling for the secure article to function specifically as a passport, and the presence of inkjet print upon the surface structure within independent claims 1 and 15, along with various other modifications to the claims depending therefrom), a further search of the pertinent areas of prior art was executed. Within said search, the aforementioned Heine reference was identified. Accordingly, Applicants’ arguments 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.
Conclusion
Applicants’ 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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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637
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