DETAILED ACTION
Election/Restrictions
Claims 34 and 38-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/28/26.
The applicant elected Group A1/B1 drawn to Figures 1-2B. Although the applicant suggests only claims 34 and 38-44 are not readable on the elected restriction, the Examiner respectfully disagrees. The applicant states that “claims 23-32 and 35-37 should be considered generic across all species because claims 23-32 and 35-37 do not include limitations that would prevent them from being readable on each of Figs. 1a-7c” which is not persuasive.
Claims 31 and 32 are drawn to “visually visible” and “visually invisible” ink areas used in conjunction with the first and second luminescent markers, which is not an element of elected Figures 1-2B. Although this is not shown in other embodiments, if examined, the Drawings would be objected to as not showing the claimed subject matter. Any newly furnished Drawings showing the claimed subject matter would be withdrawn by original presentation (the Figures, showing these features, if originally present, would be a separate species).
Claim 35 is drawn to an arrangement of the first and second luminescent markers arranged into a barcode, also not shown in the elected Figures and non-elected for the same reasons detailed above.
Claim 36 is drawn to a third luminescent marker, also not shown in the elected Figures and non-elected for the same reasons detailed above.
It is noted that claim 37 is not considered outside the scope of the elected embodiment at this time, however, amendments drawn to differences between banknotes (beyond a mere duplication) is not shown in the elected Figures and would be non-elected for the same reasons detailed above.
The first and second luminescent substances, which are generic to all the above withdrawn claims are not the special technical feature, as it is not inventive as claimed, for the reasons detailed below.
Thus claims 31-32, 34-36, and 38-44, are withdrawn.
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 23-29, 33, and 37, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Glering et al. (US 2008/0252065).
In respect to claims 23-24 and 33, Glering et al. disclose a flat document of value 10 provided with a luminescence feature wherein: the luminescence feature comprises a first luminescence marker 12 in a first subarea and a second luminescence marker 13 in a second different area [it is noted that markers 12 and 13 are combined in areas 16 (Fig. 2), wherein these areas 16 may be different “disjunct” subareas and which overlap in a projection of the longitudinal direction (Fig. 1), [thus with both markers 12 and 13 being in distinct subareas, a first marker 12 and second marker 13 may be construed as in different subareas]; the first and second markers are excited to luminesce in essentially the same emission band in the infrared range (around 1090nm), with 22 being the emission of first marker 12 and 23 being the emission of second marker 13 (Fig. 3); it is readily apparent to one of ordinary skill that the difference between the emission, at least at some point between the spectra (e.g. 32 and 33, around 1300 nm), there are differences larger than 11%, and that this difference narrows to zero, thus a difference of between 1-11% at certain wavelengths (Fig. 3).
In respect to claim 25, Glering et al. disclose that the first and second markers luminesce, after excitation, in wavelengths ranging from 700 nm – 2500 nm (0008).
In respect to claim 26, Glering et al. disclose traditional fluorescence, with lower energy admission (with no disclosure of anti-Stokes or up-conversion behavior).
In respect to claim 27, Glering et al. disclose inorganic luminescent substances (0012-0013).
In respect to claims 28 and 29, Glering et al. disclose that the two luminescent markers may be different (0014), may be similar in a “common luminescent substance” (same dopant) and different host lattices (0016).
In respect to claim 37, Glering et al. disclose that a plurality of documents may be made with different encoded features (the coding identifying the individual documents), however, each contains the same luminescent markers (0025-0028).
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 30 is rejected under 35 U.S.C. 103 as being unpatentable over Glering et al. (US 2008/0252065) in view Fischer et al. (WO 2020/030413).
Glering et al. substantially disclose the claimed invention for the reasons stated above, but do not disclose that the first and second luminescent markers are selected to differ in terms of onset or decay times of emissions, however, Fischer et al. teach similar markers which may also be IR markers as in Glering et al., which may further contain phosphorescent properties which one of ordinary skill readily understands to have emission decay (Pg. 10, 22-30). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the present application to provide at least one of the first and second markers taught in Glering et al. with phosphorescent properties in view of Fischer et al. to provide different decay times for measurement. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, utilizing phosphorescence in fluorescent markers to provide measurable differences in decay times for authentication.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fischer (WO 2020/03413), Glering et al. (US 2008/0116272), Heise et al. (DE 10-2019-119687), Kecht (US 2022/0041005), Schiffmann (DE 10-2019-006315), Stock et al. (ES 2,776,194), and Rauscher et al. (DE 10-2016-011180), Stock (DE 10-2023-126565), disclose similar inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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