DETAILED ACTION
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 1-20 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.
In respect to claim 1, the claim recites “wherein the first pattern has a color that is adapted to the first material of the of the laser-engravable portion such that the first pattern is not visible…at a first observation angle…[and] is visible…at a second observation angle” which is unclear and indefinite.
First, the claim is drawn to a laser-engravable portion configured to have an image engraved. No image engraving is present in the claim (in fact method claim 15 provides the engraving). Thus, it is a rectangular patch with no engraved parts, thus the first pattern which is behind the non-engraved laser-engravable portion would not be visible from any angle. This unclear statement is further continued in the functional recitations of several dependent claims with views from the first side.
Assuming that a personally engraved structure is claimed (which it is not), the claims are further unclear. Claim 1 is stated that the first pattern has a color “adapted to” a color of the laser-engravable portion, such that it is not visible from some angles. This is further unclear i.e. if an engraved image has transparent (engraved) portions and non-engraved portions with a color “adapted to” the color of the first pattern, this does not explain how the first pattern is not visible, due to the color. If you had a e.g. red laser-engravable surface (from a first angle) and the first pattern is also red, the first pattern would still be visible though the engraved portions.
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, 10-12, and 15, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schiffmann et al. (EP 2,465,701) (See NPL for English Translation).
In respect to claims 1, 11, and 15, the claim is indefinite and unclear for reasons detailed in the 35 USC 112(b) rejection, but as best as the Examiner can ascertain, Schiffmann et al. disclose a personalizable security element comprising: a substrate 12 having a first side and a second opposite side; and a security feature formed in the substrate and extending through at least part of the substrate thickness, wherein the security feature includes: a first layer 38/40 including a laser engravable-portion (laser engraved portions shown at 16 and 18) (Fig. 3a), the laser-engravable portion including a first material 40 that exhibits a color change effect from different observation angles; and a second layer arranged below the first layer including a first pattern 36 overlapping at least part of the laser-engravable layer (0006); wherein the color of the first pattern is adapted to the first material of the laser-engravable such that the first pattern “34” is not visible from the first side from a first observation angle (Fig. 2b) and is visible from a second observation angle (Fig. 2a).
In respect to claims 2-4 and 6-7, Schiffmann et al. disclose the structures as indicated above which are capable of functioning as claimed. Schiffmann et al. disclose that the substrate 30 may be transparent thus the first pattern may be viewable from the second side (0029). Furthermore, the laser-engravable layer itself may be semi-transparent (0011).
In respect to claim 5, Schiffmann et al. disclose that the first pattern may be contain a luminescent substance
In respect to claim 10, Schiffmann et al. disclose that the second layer may be provided via screen printing (0035).
In respect to claim 12, Schiffmann et al. disclose that the “security feature” may extend through the substrate, since “security feature” may broadly encompass the transparent substrate (which it may be viewed therethrough).
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.
Claims 8-9, 16, and 17, are rejected under 35 U.S.C. 103 as being unpatentable over Schiffmann et al. (EP 2,465,701) (See NPL for English Translation) in view of Larina et al. (US 2024/0165985).
Schiffmann et al. substantially disclose the claimed invention, but do not disclose a separate third layer (above or below the second layer) having a second pattern that contains a fluorescent ink, however, Larina et al. disclose a similar security document which contains a similar personalized top layer 8 which may have laser-engraved portions 6, and a color layer 2 (first pattern), with an interposed UV fluorescent ink 3 therebetween (Fig. 7). It would have been obvious to provide the security document taught in Schiffmann et al. with an interposed UV fluorescent ink in view of Larina et al. to provide color effects readable via the UV spectrum (0005).
Claims 13-14 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schiffmann et al. (EP 2,465,701) (See NPL for English Translation) in view of Sarrazin et al. (WO 2015/083099).
Schiffman et al. disclose the laser engravable portion contains color-shifting elements, but does not explicitly disclose metallic particles and organic particles in approximately 1:1 ratio, however, the disclosure of the present application specifically mentions the patent of Sarrazin as known color-shifting laser-markable materials. 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, for the purpose of providing a color-shifting laser engravable substrate, providing a known color-shifting laser-engravable substrate, admitted by the Specification.
Conclusion
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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