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
Claim 14 is 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 Holmes and Pietari references (discussed in greater depth infra), which represents the prior art combination closest to Applicants’ claimed invention, and there would be no obvious reason to modify Holmes and Pietari to the extent necessary to satisfy each of Applicants’ pertinent limitations.
With respect to claim 14, the provision of an embossing varnish with embossed relief therein, and a multi-ply thin-film element reflector/dielectric/absorber arrangement or multi-layer arrangement comprising two semitransparent metallizations with dielectric layer embedded therebetween are well known, but providing such structures within the Holmes optical assembly would interfere with the optical assembly’s ability to provide its optical in the same fashion that Holmes actually intends.
In view of the foregoing, the modifications necessary to satisfy each of Applicants’ claim limitations would be likely to render the Holmes/Pietari assembly incapable of continuing to operate/behave in the particular manner set forth within the references themselves (given the particularly sensitive nature of such sensitive optical security assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
Claim 14 would be allowable if rewritten to overcome the rejections 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 11-20 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.
There is insufficient antecedent basis for multiple limitations in the claims, including: i) claims 11 and 18 recite the limitation "the surface of the adhesive layer"; ii) claim 18 recites the limitations “the providing of a value document substrate”, “the providing of a security element”, “the washing-off”; iii) claims 18-19 recite the limitation “the providing of the value document substrate”; iv) claims 18 and 20 recite the limitation “the wash-removable coating”; and v) claim 20 recites the limitations “the step of washing off the wash-removable coating” and “the embedding”.
The claim 11 recitation of “the surface of the adhesive layer is provided with a coating” is unclear, as it is unknown whether the intended surface is one which faces the security element, or alternatively, one which faces the value document substrate. Exactly what structure/configuration is sought? Please review/revise/clarify.
The claims 11 and 18 recitations of “can be washed off on contact with washing liquid” is unclear. Do Applicants intend the coating to capable of being removed during an act of somehow washing a liquid, or alternatively, do Applicants intend the coating to be capable of being removed via the use of a particular “washing liquid” solution? Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 13 recitation of “a color change which varies when viewed in reflected light and when viewed in transmitted light” is unclear, as it is unknown whether Applicants desire: i) a configuration in which a displayed color changes during observation both in reflected light and in transmitted light; or ii) a configuration in which one color is observable in reflected light and a different color is observable in transmitted light. Exactly what structure/configuration is sought? Please review/revise/clarify.
Regarding claim 14, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The claim 16 recitation of “and according to claim 11” is unclear, as it is unknown whether Applicants intend to invoke the “value document” or the “security element” that is mentioned in claim 11.
The claim 18 recitation of “liberate the adhesive layer” is unclear, as it is unknown exactly what type of “liberation” is sought. Do Applicants desire the adhesive layer to be removed from some adjoining layer, or alternatively, to be afforded some type of rights?
The claims 18-20 recitations of “by means of” are unclear, as it is unknown exactly what operations/functions are being invoked. Exactly what steps do Applicants desire? Please review/revise/clarify.
The term “elevated” in claim 18 is a relative term which renders the claim indefinite. The term “elevated” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 12, 15 and 17 are rejected as depending (directly or indirectly) from rejected independent claim 11.
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 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2013/0107335 to Holmes (“Holmes”) in view of WO 2020/260765 A1 to Pietari et al. (“Pietari”)- later published as U.S. Patent Application Publication No. 2022/0356375. Note that all references to Pietari herein shall pertain to the United States publication.
Regarding claim 11, Holmes discloses a security element (e.g. security device assembly atop substrate 10, as shown in fig. 1a and discussed at para. 2) for safeguarding (i.e. protecting security, as discussed at para. 2) a value document (e.g. documents discussed at para. 2), comprising a carrier substrate (e.g. carrier layer 1, as shown in fig. 1a and discussed at para. 37), a coating (e.g. optical microstructures 4 and 4’, reflection enhancing layers 5 and 5’, and laminating adhesive 6, together, as shown in fig. 1a and discussed at paras. 37 and 44) provided with an optical surface mark (the Office acknowledges the definition of “coating provided with an optical surface mark” set forth within paragraph 11 of Applicants’ filed specification, and notes that the aforementioned combination of layers yields the desired configuration), and a heat-sealable (para. 47) adhesive layer (e.g. thermally activated adhesive 9, as shown in fig. 1a and discussed at para. 45) suitable for bonding (fig. 1a) the security element (aforementioned security device assembly atop substrate 10) to (fig. 1a) a value document substrate (10, as shown in fig. 1a and discussed at para. 47).
Holmes does not disclose wherein the surface of the adhesive layer (9) is provided with a coating which can be washed off on contact with washing liquid.
Pietari teaches the concept of providing a surface (e.g. front and rear surfaces, as shown in figs. 1-2 and 4) of an adhesive layer (4, as shown in figs. 1-2 and 4 and discussed at para. 77) with a coating (e.g. additive, as discussed at para. 82-83) which can be washed off on contact with (para. 82-83) washing liquid (e.g. water, as discussed at para. 82-83). Also note that the instant claim is drawn to a security element- not a method of use thereof.
Given that Holmes concerns a security device that can be applied to a substrate in the form of a label (para. 22) and Pietari similarly concerns a label to be applied to an item substrate (para. 4), it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the Pietari additive teachings to the Holmes adhesive 9 material before being attached to Holmes substrate 10, in order to provide the benefit of yielding a resultant assembly in which the Holmes security device assembly may be removed from the document to which it is attached for future reuse, before the document is removed from circulation or destroyed.
Regarding claim 12, Holmes in view of Pietari discloses the security element according to claim 11, wherein the heat-sealable adhesive layer (Holmes 9) suitable for bonding (Holmes fig. 1a) the security element (aforementioned Holmes security device assembly atop substrate 10) to (Holmes fig. 1a) a value document substrate (Holmes 10, as shown in fig. 1a and discussed at para. 47) is additionally UV-curing (per Holmes para. 55 and 70 and claim 20, UV-curing adhesives may be utilized within the assembly to laminate a security structure to an underlying support layer).
Regarding claim 13, Holmes in view of Pietari discloses the security element according to claim 11, wherein the coating provided with an optical surface mark (Holmes 4, 4’, 5 , 5’ and 6, together) exhibits an optically variable effect (Holmes para. 10), more particularly a diffraction pattern (Holmes para. 10), a holo-gram (Holmes para. 10), a micromirror arrangement, a color flop effect, or a color change which varies when viewed in reflected light and when viewed in transmitted light.
Regarding claim 15, Holmes in view of Pietari discloses the security element according to claim 11, wherein the security element (aforementioned Holmes security device assembly atop substrate 10) is a security thread (Holmes para. 73), a security strip (Holmes para. 73; note that a thread is a form of “strip”) or a security patch (Holmes fig. 1a).
Regarding claim 16, Holmes in view of Pietari discloses a value document (e.g. banknotes discussed at Holmes para. 22) comprising (Holmes para. 22) a security element (aforementioned Holmes security device assembly atop substrate 10) provided therewith (Holmes para. 22) and according to claim 11.
Regarding claim 17, Holmes in view of Pietari discloses the value document according to claim 16, wherein the value document (aforementioned banknotes discussed at Holmes para. 22) is a banknote (Holmes para. 22).
Regarding claim 18, Holmes in view of Pietari discloses a method for producing the value document according to claim 16, comprising: i) the providing (Holmes fig. 1a) of a value document substrate (Holmes 10); ii) the providing (Holmes fig. 1a) of a security element (aforementioned Holmes security device assembly atop substrate 10), comprising a carrier substrate (Holmes 1), a coating provided with an optical surface mark (Holmes 4, 4’, 5, 5’ and 6, together), and a heat-sealable adhesive layer (Holmes 9) suitable for bonding (Holmes fig. 1a) the security element (aforementioned Holmes security device assembly atop substrate 10) to the value document substrate (Holmes 10), the surface of the adhesive layer (Holmes 9) being provided with a coating (Pietari additive) which can be washed off on contact with (Pietari para. 82-83) washing liquid (Pietari water, as discussed at para. 82-83); iii) the washing-off (Pietari para. 82-83) of the wash-removable coating (Pietari additive) by means of a washing liquid (aforementioned Pietari water), to thereby liberate (see the combination set forth in the rejection of claim 11, supra) the adhesive layer (Holmes 9); iv) the providing (Holmes fig. 1a) of the value document substrate (Holmes 10) with the security element (aforementioned Holmes security device assembly atop substrate 10) by means of the liberated adhesive layer (Holmes 9) at elevated pressure and elevated temperature (per Holmes para. 47, adhesive 9 is thermally activated using hot stamping, and per Holmes para. 49, a pressure sensitive adhesive may be utilized).
Regarding claim 19, Holmes in view of Pietari discloses the method according to claim 18, wherein the adhesive layer (Holmes 9) is additionally UV-curing (per Holmes para. 55 and 70 and claim 20, UV-curing adhesives may be utilized within the assembly to laminate a security structure to an underlying support layer) and the providing (Holme figs. 1a) of the value document substrate (Holmes 10) with the security element (aforementioned Holmes security device assembly atop substrate 10) additionally entails curing the adhesive layer by means of UV radiation (Holmes para. 55 and 70, and claim 20).
Regarding claim 20, Holmes in view of Pietari discloses the method according to claim 18, wherein the security element (aforementioned Holmes security device assembly atop substrate 10) is a security thread (Holmes para. 73) and the step of washing off (see the combination set forth in the rejection of claim 11, supra) the wash-removable coating (Pietari additive) by means of a washing liquid (aforementioned Pietari water), to thereby liberate (see the combination set forth in the rejection of claim 11, supra) the adhesive layer (Holmes 9), takes place before the embedding (see the combination set forth in the rejection of claim 11, supra) of the security thread (Holmes para. 73) into the value document substrate (Holmes 10).
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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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637
