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 .
Information Disclosure Statement
The information disclosure statements filed 03/17/2025 and 07/15/2025 fail to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
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.
Claim(s) 20 and 24 is/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.
Claim 20 recites the limitation “the phase change material comprises, consists essentially of, or consists of” which is indefinite. The language does not clearly set forth the metes and bounds of the patent protection desired because the term “comprises” is a broad limitation and “consists essentially of” and “consists of” are narrow limitations that may fall within the broad limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite. See MPEP § 2173.05(c).
Claim 24 recites the limitation “the receiving member preferably forms all or part of a security device for an article, preferably for an article of legal tender” which is indefinite. The phrases “preferably” render the claim(s) indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The limitation has been examined below as if it read --the receiving member forms all or part of a security device for an article--.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-5, 8-10, 12, 15-16, 20-21, and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oishi (JP H10124938A with English machine translation – FOR of record).
Regarding claim 1, Oishi discloses method of applying a pattern (process for transferring/applying track patterns: Abstract), comprising:
providing a receiving member (optical disk B) having a layered structure, the layered structure comprising a layer of phase change material (phase change type recording layer 3: P0012, 0015, 0026, Fig. 1B), the phase change material being thermally switchable between a plurality of stable states having different refractive indices relative to each other (the material of the phase change type recording layer 3 is switchable between amorphous and crystalline states when heated by a laser beam and/or during stamping: abstract, P0017, 0014; wherein the amorphous and crystalline states have different refractive indices relative to each other: P0018 of Oishi and [0029] of Applicant’s published application); and
stamping an embossing member (11) into the receiving member (P0038, Fig. 1B), wherein: the embossing member heats a selected portion of the layer of phase change material via contact with the receiving member (inner circumference and outer circumference of the phase change recording layer 3) during the stamping, the heating being such as to thermally switch phase change material in the selected portion and thereby apply a pattern (7) of different refractive indices to the layer of phase change material (P0018, 0028, 0038, 0042, Fig. 1B; furthermore, since the taught and claimed embossing step and apparatus are patentably indistinct, the taught embossing step and apparatus are expected to perform the function of heating a selected portion of the layer of phase change material via contact with the receiving member during the stamping, the heating being such as to thermally switch phase change material in the selected portion and thereby apply a pattern of different refractive indices to the layer of phase change material: See MPEP §§ 2112 III and 2114 I).
Regarding claim 2, Oishi further discloses wherein the embossing member comprises a stamping surface (15A) having a pattern of protrusions, and the stamping causes the protrusions (protrusions on stamping surface 15A) to form in a corresponding pattern of indentations (7) in the receiving member (P0007, 0028, Fig. 1A).
Regarding claim 3, Oishi further discloses/suggests wherein the pattern of indentations is spatially registered with the pattern of different refractive indices in the layer of phase change material (the layer of phase change material 3 also has indentations 7 that is spatially registered with the pattern of changes in phase which yields different refractive indices: P0007, 0018, 0028, Fig. 1A; furthermore, since the taught and claimed embossing step and apparatus are patentably indistinct, the taught embossing step and apparatus are expected to achieve the same function/result: See MPEP §§ 2112 III and 2114 I).
Regarding claim 4, Oishi further discloses/suggests wherein the pattern of indentations is aligned with the pattern of different refractive indices (the layer of phase change material 3 also has indentations 7 that is spatially aligned with the pattern of changes in phase also called initialization which yields different refractive indices: P0007, 0018, 0028, Fig. 1A; furthermore, since the taught and claimed embossing step and apparatus are patentably indistinct, the taught embossing step and apparatus are expected to achieve the same function/result: See MPEP §§ 2112 III and 2114 I).
Regarding claim 5, Oishi further discloses/suggests wherein the pattern of indentations is substantially identical to the pattern of different refractive indices (the layer of phase change material 3 also has indentations 7 that is substantially identical with the pattern of changes in phase also called initialization which yields different refractive indices: P0007, 0018, 0028, Fig. 1A; furthermore, since the taught and claimed embossing step and apparatus are patentably indistinct, the taught embossing step and apparatus are expected to achieve the same function/result: See MPEP §§ 2112 III and 2114 I).
Regarding claim 8, Oishi further discloses/shows wherein the protrusions comprise tapered elements (the embossing elements have inverted shape to the embossed tapered indentations 7: P0028, Fig. 1A).
Regarding claim 9, Oishi further discloses/shows wherein the protrusions comprise a plurality of identical protrusion elements, each protrusion element being separated from each other protrusion element (the embossing elements have inverted identical shape and arrangement to the embossed indentations 7 which are shown as being separated from each other: P0028, Fig. 1A).
Regarding claim 10, Oishi further discloses/shows wherein the protrusion elements have a mirror symmetric cross-section when viewed in a direction perpendicular to a direction of stamping (the embossing elements have inverted shape to the embossed indentations 7, and therefore, they have a mirror symmetric cross-section when viewed in a direction perpendicular to a direction of stamping: P0028, Fig. 1A).
Regarding claim 12, Oishi further discloses/suggests wherein: the layered structure comprises a reflective layer (dielectric layer 2 being a reflective layer when it is made of ZnS-SiO2 or a mixture of disclosed metal oxides) beneath the layer of phase change material (2 beneath 3: P0017, Fig. 1A),
and the stamping of the embossing member into the receiving member is performed at least once from the same side of the phase change material opposite to the reflective layer (P0028, Figs. 1A and 2).
Regarding claims 15-16, Oishi further discloses/suggests providing a transparent member (6) in one or more of the indentations (P0029, Fig. 1A), wherein the transparent member is shaped to provide a retroreflective effect (the shape and depth of 6 on indentations 7 in combination beneath reflective layer 5 are expected to provide a retroreflective effect: Fig. 1A; See also MPEP §§ 2112.01 I and 2114 I).
Regarding claim 20, Oishi further discloses wherein the phase change material comprises one or more of the following: an alloy or compound comprising Ge and Sb; an alloy or compound comprising Ag, In, Sb, and Te; an alloy or compound comprising In and Sb; an alloy or compound comprising In, Sb, and Te; an alloy or compound comprising Sb and Te; an alloy or compound comprising Ag, Sb, and Te; and an alloy or compound comprising Al and Sb (P0018).
Regarding claim 21, Oishi further discloses/suggests wherein the layered structure comprises a spacer layer (layer 4) provided between the layer of phase change material (3) and a reflective layer (5: P0025, Fig. 1A), wherein the spacer layer consists of a single layer or comprises multiple layers of materials having different refractive indices (layer 4 reads on the claimed spacer layer because the taught and claimed layers have the same composition TiO2, SiO2, and/or ZnS—SiO2: P0017, 0019, Fig. 1A; See [0035] of Applicant’s published application; See also MPEP §§ 2112.01 I and 2114 I).
Regarding claim 23, Oishi further discloses wherein the receiving member comprises a polymer substrate (substrate 1: P0016, Fig. 1B).
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(s) 6-7, 11, 13-14, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oishi (JP H10124938A with English machine translation – FOR of record) as applied to claims 1, 2 and 9 above.
Regarding claim 6, Oishi does not disclose that at least a portion of a recessed region of the stamping surface that is outside of the protrusions in the stamping surface does not contact the receiving member during the stamping.
However, a depth of stamping the protrusions is a well-known adjustable parameter in the stamping art. A person of ordinary skill in the art would have recognized that partial stamping is one of a finite number of options available (i.e., complete and partial) known to be useful for obtaining partial transfer of protrusions and incomplete stamping depth.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Oishi by performing stamping such that at least a portion of a recessed region of the stamping surface that is outside of the protrusions in the stamping surface does not contact the receiving member during the stamping for the benefit(s) of obtaining partial transfer of protrusions and incomplete stamping depth.
Regarding claim 7, Oishi further discloses/suggests wherein the stamping surface has a uniform temperature distribution during the stamping (P0005, 0038).
Regarding claim 11, Oishi does not disclose wherein the protrusion elements have a mirror asymmetric cross-section when viewed in a direction perpendicular to a direction of stamping.
However, the shape of protrusion elements is a well-known adjustable parameter in the stamping art. A person of ordinary skill in the art would have recognized that a mirror asymmetric cross-section is one of a finite number of options available (mirror asymmetric cross-section and mirror asymmetric cross-section) known to be useful for optimizing the optical properties such as reflectance of the embossed indentations.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Oishi by changing the shape of the protrusion elements have a mirror asymmetric cross-section when viewed in a direction perpendicular to a direction of stamping for the benefit(s) of optimizing the optical properties such as reflectance of the embossed indentations.
Regarding claim 13, Oishi further discloses/suggests wherein: the layered structure comprises a reflective layer (dielectric layer 2 being a reflective layer) beneath the layer of phase change material (P0017, Fig. 1A).
Oishi does not disclose that the stamping of the embossing member into the receiving member is performed at least once from the same side of the phase change material as the reflective layer.
However, since Oishi teaches to stamp all the layers and a person of ordinary skill in the art would have recognized that stamping from the bottom is one of a finite number of options available (i.e., bottom and top) known to be useful for obtaining inverted stamping results, it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Oishi by stamping of the embossing member into the receiving member from the from the same side of the phase change material as the reflective layer for the benefit(s) of obtaining inverted embossing indentations.
Regarding claim 14, Oishi further discloses/suggests wherein the stamping of the embossing member into the receiving member from the same side of the phase change material as the reflective layer is such as to cause a modification of a surface topography on a side of the receiving member opposite to the stamping (Oishi teaches that stamping of the embossing member into the receiving member from any side of the phase change material cause a modification of a surface topography of all the layers: Fig. 1A).
Regarding claim 17, Oishi fails to disclose wherein the stamping of the embossing member into the receiving member is performed multiple times.
However, it has been held that splitting of one step into two is obvious in the absence of new or unexpected results.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Oishi by splitting the stamping step into two or more stamping steps so as to perform stamping multiple times for the benefit(s) of providing different stamping patterns and/or improving stamping accuracy.
Regarding claim 18, Oishi further discloses/suggests wherein at least a subset of the stampings is performed with different embossing members (P0042).
Regarding claim 19, Oishi fails to disclose wherein a stamping surface of the embossing member has a non-uniform temperature distribution during the stamping, the non-uniform temperature distribution at least partly defining the selected portion of the layer of phase change material that is thermally switched during the stamping.
However, since Oishi explicitly discloses the relationship of phase change to temperature and a person of ordinary skill in the art would have recognized that a non-uniform temperature distribution
is one of a finite number of options available (i.e., non-uniform temperature distribution and uniform temperature distribution) known to be useful for heating the embossing surface and obtaining localized/targeted phase change, it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Oishi by
making the stamping surface of the embossing member to have a non-uniform temperature distribution during the stamping, the non-uniform temperature distribution at least partly defining the selected portion of the layer of phase change material that is thermally switched during the stamping for the benefit(s) of obtaining localized/targeted phase change.
Claim(s) 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oishi (JP H10124938A with English machine translation – FOR of record) as applied to claim 1 above, and further in view of Egginger (WO 2021228943 with English machine translation – of record) and/or Hosseini (US 2018028449).
Regarding claim 21, if Applicant believes that Oishi fails to disclose a spacer layer because Oishi fails to explicitly mention the term “spacer layer” in his disclosure, then, in the same field of endeavor, methods of making security devices, Egginger discloses the technique of using a layered structure comprising a spacer layer (4) provided between a layer of phase change material (5) and a reflective layer (7), the layer of phase change material (5) with a selected portion thermally switched, and the spacer layer consists of a single layer for the benefit(s) of improving optical security/properties/adjuments of the layered structure (Abstract, pp. 3-5, Fig. 1).
In the same field of endeavor, methods of making security devices (P0065) or optical layered structures incorporating a layer of phase change material to improve/adjust optical properties (Abstract, P0001-0003), Hosseini discloses the technique of using a layered structure comprising a spacer layer (40) provided between a layer of phase change material (10) and a reflective layer (12), wherein the spacer layer consists of a single layer or comprises multiple layers (401, 402) of materials having different refractive indices (Abstract, P0031, 0036-0037, Fig. 11) for the benefit(s) of improving optical security/properties/adjuments of the layered structure (P0002-0003, 0036, 0065).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Oishi in view of Egginger and/or Hosseini by incorporating a spacer layer provided between the layer of phase change material and a reflective layer, wherein the spacer layer consists of a single layer or comprises multiple layers of materials having different refractive indices for yielding the predictable benefit(s) of improving optical security/properties/adjuments of the layered structure as suggested by Egginger and/or Hosseini.
Regarding claim 22, Oishi fails to disclose wherein the layered structure comprises a capping layer as claimed.
Egginger further discloses the technique of using a layered structure comprising a capping layer (11), wherein the layer of phase change material (5) is provided between the capping layer (11) and a reflective layer (7), and the capping layer (11) consists of a single layer for the benefit(s) of improving optical security/properties/adjuments of the layered structure (Abstract, pp. 3-5, Fig. 1).
Hosseini further discloses the technique of using a layered structure comprising a capping layer (16), wherein the layer of phase change material (10) is provided between the capping layer (16) and a reflective layer (12), and the capping layer (16) consists of a single layer or comprises multiple layers (161-162) of materials having different refractive indices (Abstract, P0029, P0032, 0036-0037) for the benefit(s) of improving optical security/properties/adjuments of the layered structure (P0002-0003, 0036, 0065).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Oishi in view of Egginger and/or Hosseini by incorporating a capping layer, wherein the layer of phase change material is provided between the capping layer and a reflective layer and the capping layer consists of a single layer or comprises multiple layers of materials having different refractive indices for yielding the predictable benefit(s) of improving optical security/properties/adjuments of the layered structure as suggested by Egginger and/or Hosseini.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oishi (JP H10124938A with English machine translation – FOR of record) as applied to claim 1 above, and further in view of Herslow (US 20180349751) and/or Egginger (WO 2021228943 with English machine translation – of record).
Regarding claim 24, Oishi fails to disclose wherein the receiving member forms all or part of a security device.
In the same field of endeavor, methods of applying a pattern, Herslow discloses the technique of forming all or part of a security device (security card) with an embossed receiving member for the benefit(s) of improving/providing security (Abstract, P0002, 0030, 0033, 0037, Fig. 1C). Herslow discloses that the technique of stamping an embossing member (140b) into a layer of phase change material (106b) such that the embossing member heats a selected portion of the layer of phase change material (106b) via contact during the stamping, the heating being such as to thermally switch the phase change material in the selected portion and thereby apply a selective pattern to the layer of phase change material (P0034-0035, Fig. 1C). Herslow further discloses that depth of stamping embossing protrusions is an adjustable process parameter (P0037). Herslow also discloses that stamping from a top side is an obvious/combinable variant to stamping from a bottom side yielding predictable embossing results (P0041, Figs. 1C, 1E, and 1F-G). Thus, Herslow further discloses/obviates other claimed subject matter. In fact, Herslow can be applied as a primary reference.
In the same field of endeavor, methods of making security devices, Egginger discloses the technique of forming all or part of a security device (security element 1) with a layered structure (2), the layered structure comprising a layer of phase change material (PCM layer 5) with a selected/targeted portion heated and phase transformed for the benefit(s) of improving/providing security (Abstract, pg. 4-5, Figs. 1-1A).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Oishi in view of Herslow and/or Egginger by forming all or part of a security device with the receiving member for the benefit(s) of providing/improving security of a security device as suggested by Herslow and/or Egginger.
Conclusion
Additional prior art made of record and not relied upon that is considered to be pertinent to
Applicant’s disclosure:
Chou (US 20080012184) discloses the benefits of performing partial stamping such that the stamping surface does not contact the receiving member during stamping (Fig. 1B, P0069).
Koivukunnas (US 20090134534) discloses the benefits of using protrusion elements (41) having a mirror asymmetric cross-section when viewed in a direction perpendicular to a direction of stamping (P0057, Figs. 4a-b).
Gutman (US 20050082698) discloses the benefit(s) of using a non-uniform temperature distribution for the embossing surface during stamping (P0049-0051).
Nystrom (US 20050093186) discloses the benefit(s) of stamping an embossing member into a receiving member multiple times with same or different embossing members (0017, Fig. 1e). Nystrom also discloses stamping of a receiving member from a top and bottom of the receiving member (P0016, Fig. 1d).
Mimura (US 2013028648) discloses the technique and benefit of providing a transparent member (51) in one or more of the indentations of an optical layered structure for the benefit(s) of providing a retroreflective effect (P0001, 0109, Fig. 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERZI H MORENO HERNANDEZ whose telephone number is (571)272-0625. The examiner can normally be reached 1:00-10:00 PM PT.
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/JERZI H MORENO HERNANDEZ/ Primary Examiner, Art Unit 1743