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 8-10 and 16-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 Benninger reference (discussed in greater depth infra), which is the prior art closest to Applicants’ claimed invention, and there would be no obvious reason to modify Benninger to the extent necessary to satisfy each of Applicants’ pertinent limitations.
With respect to claims 8-10, the provision of an electromagnet having pulsing functions (claim 8) and variable current (claim 9-10) is well known, but providing such functionality to the Benninger magnet would interfere with the ability of said magnet to arrange/orient each of the magnetic particles within the respective ink layers according to the exact arrangements shown within the reference.
With respect to claims 16-17, the provision of magnetic particles within a coating at various orientations is well known, but providing the particular orientations that claims 16-17 call for would require the Benninger particles to be arranged in directions that are specifically inconsistent with that which Benninger teaches, and as such, would interfere with the ability of the Benninger particles to exhibit the particular optical effects that the reference contemplates.
In view of the foregoing, the modifications necessary to satisfy each of Applicants’ claim limitations would be likely to render the Benninger assembly incapable of continuing to operate/behave in the particular manner set forth within the reference itself (given the particularly sensitive nature of such optical effect assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
Claims 8-10 and 16-17 would be allowable if rewritten to overcome the rejection(s) 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.
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 1-25 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 “the particles are magnetically anisotropic” is unclear, as it is unknown whether Applicants intend to refer to the earlier recited “first set of particles”, “second set of particles”, or both. Exactly what structure/configuration is sought? Please review/revise/clarify.
There is insufficient antecedent basis for multiple limitations in the claims, including: i) claims 1 and 22-23 recite the limitation "the coercivity"; ii) claim 1 recites the limitation “the sections of the security thread” and “the security thread”; iii) claim 16 recites the limitation “the longitudinal axis”; and iv) claim 23 recites the limitations “the magnetic particles” and “the set of magnetic particles”.
The claims 1 and 23 recitations of “a magnetic field strength… aligned in a first direction” and “a magnetic field strength… aligned in a second direction” are unclear. Exactly how can a magnetic field strength be “aligned”? Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 22 recitation of “within at least part of the printed ink layer, wherein the particles of the first set of particles are oriented in a first direction” is unclear. Do Applicants actually intend to recite “within at least part of the printed ink layer, the particles of the first set of particles are oriented in a first direction”? Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 22 recitation of “within one of more sections of the printed ink layer, wherein the particles of the second set of particles are oriented in a second direction” is unclear. Do Applicants actually intend to recite “within one or more sections of the printed ink layer, the particles of the second set of particles are oriented in a second direction”? Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 23 recitation of “curing the printed ink, locking the particles in their orientations” is unclear, as the particles are previously “orientated” in a “first direction” and then “orientated” in a “second direction”. In which of these orientations should the particles be locked? Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 24 recitation of “[a] magnetic security feature comprising a printed ink layer and a substrate” is unclear, as it is unknown how said elements should be physically related to each other. Should the printed ink layer be disposed upon the substrate, or alternatively, are they intended to exist separate from each other? Exactly what structure/configuration is sought? Please review/revise/clarify.
As presently drawn, claim 24 is narrative in form. Note that such a deficiency may be cured with appropriate placement of “wherein” clauses. Exactly what structure/configuration is sought?
Claims 2-15, 17-21 and 25 are rejected as depending (directly or indirectly) from rejected independent claims 1 and 22.
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, 11-12, 15 and 18-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2021/0323335 to Benninger et al. (“Benninger”).
Regarding claim 1, Benninger anticipates a method of creating (i.e. process for producing, per para. 17) a magnetic (para. 17) security feature (e.g. OEL 120, a s shown in fig. 1A and discussed at para. 17), the method (aforementioned process) comprising the steps of: (a) printing (per para. 57, the processes of the invention may be carried out on a printing unit) an ink (e.g. first coating layer 121 and second coating layer 122, together, as shown in fig. 1A and discussed at para. 17; per para. 62, first and second radiation curable coatings 121-122 may take the form of an ink) onto (fig. 1A) a substrate (110, as shown in fig. 1A and discussed at para. 17), the ink (121 and 122, together) comprising a first set of particles (e.g. pigment particles within first coating 121, as shown in fig. 1A and discussed at para. 17) and a second set of particles (e.g. pigment particles within second coating 122, as shown in fig. 1A and discussed at para. 17), wherein the particles (aforementioned pigment particles within first coating 121 and second coating 122) are magnetically anisotropic (para. 73) and the coercivity (e.g. coercivity of Cobalt material discussed at para. 76; note that said coercivity is around 10 oersteds) of the particles of the first set (aforementioned pigment particles within first coating 121; note that per para. 76, these particles may comprise a Cobalt magnetic layer) is higher than (note that 10 is greater than 0.7) the coercivity (e.g. coercivity of Nickel material discussed at para. 76; note that said coercivity is around 0.7 oersteds) of the particles of the second set (aforementioned pigment particles within second coating 122; note that per para. 76, these particles may comprise a Nickel magnetic layer); (b) exposing (fig. 1A) at least part (aforementioned first coating layer 121, alone) of the printed ink layer (121 and 122, together) to a first magnet (e.g. first magnetic assembly 100-a, as shown in fig. 1A and discussed at para. 17) with a magnetic field (para. 17) strength greater than (note that the applied magnetic field will need to be higher than coercivity of the applicable particle in order for intended magnetic orientation to occur) the coercivity (aforementioned coercivity of Cobalt) of the particles of the first set (aforementioned pigment particles within first coating 121) and aligned in (fig. 1A) a first direction (e.g. ultimate orientation of particles within first coating 121, as shown in fig. 1A), to orientate (fig. 1A) the particles of the first set (aforementioned pigment particles within first coating 121) and the second set (aforementioned pigment particles within second coating 122) in a first direction (aforementioned ultimate orientation of particles within first coating 121); (c) exposing one or more sections (aforementioned first coating layer 121 and second coating layer 122) of the printed ink layer (121 and 122, together) to a second magnet (e.g. second magnetic assembly 100-b, as shown in figs. 1a and discussed at para. 17) with a magnetic field (para. 17) strength greater than (note that the applied magnetic field will need to be higher than coercivity of the applicable particle in order for intended magnetic orientation to occur) the coercivity (aforementioned coercivity of Nickel) of the particles of the second set (aforementioned pigment particles within second coating 122) but less than (note that the applied magnetic field will need to be lower than coercivity of the applicable particle in order for intended magnetic orientation to occur) the coercivity (aforementioned coercivity of Cobalt) of the particles of the first set (aforementioned pigment particles within first coating 121) and aligned in (fig. 1A) a second direction (e.g. ultimate orientation of particles within second coating 122, as shown in fig. 1A), to orientate (fig. 1A) the particles of the second set (aforementioned pigment particles within second coating 122) in the sections of the security thread (e.g. security thread discussed at para. 99 and 177) in a second direction (e.g. ultimate orientation of particles within second coating 122, as shown in fig. 1A), the second direction (aforementioned ultimate orientation of particles within second coating 122) being different from (fig. 1A) the first direction (aforementioned ultimate orientation of particles within first coating 121); and then (fig. 1A) (d) curing (para. 17) the printed ink layer (121 and 122, together) so that the particles of the first and second sets (aforementioned pigment particles within first coating 121 and second coating 122) are locked in their orientations (fig. 1A).
Regarding claim 2, Benninger anticipates the method according to claim 1, wherein the particles of the first and/or second set (aforementioned pigment particles within first coating 121 and second coating 122) are non-spherical (para. 13).
Regarding claim 3, Benninger anticipates the method according to claim 2, wherein the particles of the first and/or second set (aforementioned pigment particles within first coating 121 and second coating 122) are acicular (fig. 1A).
Regarding claim 4, Benninger anticipates the method according to claim 1, wherein the printed ink layer (121 and 122, together) is one or more units (fig. 1A) of ink (para. 62).
Regarding claim 5, Benninger anticipates the method according to claim 4, wherein the one or more of the units (fig. 1A) of ink (para. 62) are discrete (fig. 1A).
Regarding claim 6, Benninger anticipates the method according to claim 1, wherein the first magnet (100-a) is a permanent magnet (para. 98).
Regarding claim 7, Benninger anticipates the method according to claim1, wherein the second magnet (100-b) is an electromagnet (per para. 62, electromagnetic radiation may be utilized).
Regarding claim 11, Benninger anticipates the method according to claim 1, wherein the ink (para. 62) is ultra-violet light curable (para. 65).
Regarding claim 12, Benninger anticipates the method according to claim 11, comprising exposing the printed ink layer (121 and 122, together) to an ultra-violet light source to cure the ink (para. 65).
Regarding claim 15, Benninger anticipates the method according to claim 1, wherein the first direction (aforementioned ultimate orientation of particles within first coating 121) is at an angle to (fig. 1A) a longitudinal axis (e.g. length dimension, as shown in fig. 1A) of the printed ink layer (121 and 122, together).
Regarding claim 18, Benninger anticipates the method according to claim 1, wherein step (c) is subsequent to step (b) (fig. 1A).
Regarding claim 19, Benninger anticipates the method according to claim 1, wherein a printer (e.g. printing unit discussed at para. 57) prints along a length (fig. 1A) of the substrate (110) to print the layer of ink (121 and 122, together).
Regarding claim 20, Benninger anticipates the method according to claim 1, wherein the magnetic security feature (120) is a security thread (para. 99) with a magnetic element (e.g. assembly shown in fig. 1A).
Regarding claim 21, Benninger anticipates the method according to claim 1, wherein the substrate (110) is a filament (e.g. security thread discussed at para. 99; note that a filament is defined as a slender threadlike object or fiber).
Regarding claim 22, Benninger anticipates a magnetic (para. 17) security feature (e.g. OEL 120, a s shown in fig. 1A and discussed at para. 17) comprising a substrate (110, as shown in fig. 1A and discussed at para. 17) and a printed (per para. 57, the processes of the invention may be carried out on a printing unit) ink layer (e.g. first coating layer 121 and second coating layer 122, together, as shown in fig. 1A and discussed at para. 17; per para. 62, first and second radiation curable coatings 121-122 may take the form of an ink), wherein: (a) the printed ink layer (121 and 122, together) is on (fig. 1A) the substrate (110); (b) the ink (121 and 122, together) comprises a first set of particles (e.g. pigment particles within first coating 121, as shown in fig. 1A and discussed at para. 17) and a second set of particles (e.g. pigment particles within second coating 122, as shown in fig. 1A and discussed at para. 17), wherein the particles in the first set and in the second set (aforementioned pigment particles within first coating 121 and second coating 122) are magnetically anisotropic (para. 73) and the coercivity (e.g. coercivity of Cobalt material discussed at para. 76; note that said coercivity is around 10 oersteds) of the particles of the first set (e.g. coercivity of Cobalt material discussed at para. 76; note that said coercivity is around 10 oersteds) being higher than (note that 10 is greater than 0.7) the coercivity (note that 10 is greater than 0.7) of the particles of the second set (aforementioned pigment particles within second coating 122; note that per para. 76, these particles may comprise a Nickel magnetic layer); (c) within at least part (aforementioned first coating layer 121, alone) of the printed ink layer (121 and 122, together), wherein the particles of the first set of particles (aforementioned pigment particles within first coating 121) are orientated in (fig. 1A) a first direction (e.g. ultimate orientation of particles within first coating 121, as shown in fig. 1A); (d) within one or more sections (fig. 1A) of the printed ink layer (121 and 122, together), wherein the particles of the second set of particles (aforementioned pigment particles within second coating 122) are orientated in (fig. 1A) a second direction (e.g. ultimate orientation of particles within second coating 122, as shown in fig. 1A), wherein the second direction (aforementioned ultimate orientation of particles within second coating 122) is different from (fig. 1A) the first direction (fig. 1A); and (e) the printed ink layer (121 and 122, together) is cured (para. 17).
Regarding claim 23, Benninger anticipates a method of creating (i.e. process for producing, per para. 17) a magnetic (para. 17) security feature (e.g. OEL 120, a s shown in fig. 1A and discussed at para. 17), the method (aforementioned process) comprising the steps of: (a) printing (per para. 57, the processes of the invention may be carried out on a printing unit) an ink (e.g. first coating layer 121 and second coating layer 122, together, as shown in fig. 1A and discussed at para. 17; per para. 62, first and second radiation curable coatings 121-122 may take the form of an ink) onto (fig. 1A) a substrate (110, as shown in fig. 1A and discussed at para. 17) to form a non-contiguous layer (figs. 1A-1B; note the ability to form non-contiguous layers of ink) of printed ink (121 and 122, together), the ink (121 and 122, together) comprising a set of particles (e.g. pigment particles within first coating layer 121 and second coating layer 122, as shown in fig. 1A and discussed at para. 17), wherein the magnetic (para. 17) particles (aforementioned pigment particles within first coating layer 121 and second coating layer 122) within the set of magnetic particles (aforementioned pigment particles within first coating layer 121 and second coating layer 122) are magnetically anisotropic (para. 73); (b) exposing (fig. 1A) at least part (aforementioned first coating layer 121, alone) of the non-contiguous layer (figs. 1A-1B) of printed ink (121 and 122, together) to a first magnet (e.g. first magnetic assembly 100-a, as shown in fig. 1A and discussed at para. 17) with a magnetic field (para. 17) strength greater than (note that the applied magnetic field will need to be higher than coercivity of the applicable particle in order for intended magnetic orientation to occur) the coercivity (e.g. coercivity of Cobalt material discussed at para. 76; note that said coercivity is around 10 oersteds) of the particles (aforementioned pigment particles within first coating layer 121) and aligned in a first direction (e.g. ultimate orientation of particles within first coating 121, as shown in fig. 1A), to orientate (fig. 1A) the particles in a first direction (e.g. ultimate orientation of particles within first coating 121, as shown in fig. 1A); (c) exposing one or more sections (aforementioned second coating layer 122, alone) of the non-contiguous layer (figs. 1A-1B) of printed ink (121 and 122, together) to a second magnet (e.g. second magnetic assembly 100-b, as shown in figs. 1a and discussed at para. 17) with a magnetic field (para. 17) strength greater than (note that the applied magnetic field will need to be higher than coercivity of the applicable particle in order for intended magnetic orientation to occur) the coercivity (e.g. coercivity of Nickel material discussed at para. 76; note that said coercivity is around 0.7 oersteds) of the particles (aforementioned pigment particles within first coating layer 121) and aligned in (fig. 1A) a section direction (e.g. ultimate orientation of particles within second coating 122, as shown in fig. 1A), to orientate (fig. 1A) the particles (aforementioned pigment particles within second coating 122) in a second direction (e.g. ultimate orientation of particles within second coating 122, as shown in fig. 1A), the second direction (aforementioned ultimate orientation of particles within second coating 122) being different from (fig. 1A) the first direction (aforementioned ultimate orientation of particles within first coating 121); and (d) curing (para. 17) the printed ink (121 and 122, together), locking the particles (aforementioned pigment particles within first coating 121 and second coating 122) in their orientations (fig. 1A).
Regarding claim 24, Benninger anticipates a magnetic (para. 17) security feature (e.g. OEL 120, a s shown in fig. 1A and discussed at para. 17) comprising a printed (per para. 57, the processes of the invention may be carried out on a printing unit) ink layer (e.g. first coating layer 121 and second coating layer 122, together, as shown in fig. 1A and discussed at para. 17; per para. 62, first and second radiation curable coatings 121-122 may take the form of an ink) and a substrate (110, as shown in fig. 1A and discussed at para. 17), wherein: (a) the printed ink layer (121 and 122, together) is non-contiguous (figs. 1A-1B; note the ability to form non-contiguous layers of ink); (b) the ink (121 and 122, together) comprises a set of magnetic particles (e.g. pigment particles within first coating layer 121 and second coating layer 122, as shown in fig. 1A and discussed at para. 17), wherein the magnetic (para. 17) particles (aforementioned pigment particles within first coating layer 121 and second coating layer 122) within the set of magnetic particles (aforementioned pigment particles within first coating layer 121 and second coating layer 122) are magnetically anisotropic (para. 73); (c) within at least part (aforementioned first coating layer 121, alone) of the non-contiguous printed ink layer (121 and 122, together), the magnetic particles (aforementioned pigment particles within first coating layer 121) are orientated (fig. 1A) in a first direction (e.g. ultimate orientation of particles within first coating 121, as shown in fig. 1A); (d) within one or more sections (e.g. ultimate orientation of particles within first coating 121, as shown in fig. 1A) of the non-contiguous printed ink layer (121 and 122, together), the magnetic particles (aforementioned pigment particles within second coating 122) are orientated (fig. 1A) in a second direction (aforementioned pigment particles within second coating 122) which is different from (fig. 1A) the first direction (fig. 1A); and (e) the ink (121 and 122, together) is cured (para. 17).
Regarding claim 25, Benninger anticipates a document comprising a magnetic (para. 13) security feature (para. 64) according to claim 22.
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 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Benninger.
Regarding claim 13, Benninger discloses the method according to claim 1, but does not disclose wherein the second direction (aforementioned ultimate orientation of particles within second coating 122) is between 20 and 90 degrees to the first direction (aforementioned ultimate orientation of particles within first coating 121).
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular chosen particle orientations will determine the ultimate aesthetic effect presented within the assembly.
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 select respective particle orientations as desired, in order to yield a resultant optical effect as desired.
Regarding claim 14, Benninger discloses the method according to claim 1, but does not disclose wherein the second direction (aforementioned ultimate orientation of particles within second coating 122) is between 20 and 60 degrees to the first direction (aforementioned ultimate orientation of particles within first coating 121).
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular chosen particle orientations will determine the ultimate aesthetic effect presented within the assembly.
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 select respective particle orientations as desired, in order to yield a resultant optical effect as desired.
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.
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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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