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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. Specifically, the title must distinguish from the inventors’ other applications and patents.
The abstract of the disclosure is objected to because it does not “enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.” 37 CFR 1.72(b). See the below 112(a) rejections.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Drawings
Figures 1 and 2 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). The same figures appear in prior art US20230030524A1. Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 (all claims) are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of each of U.S. Patent No. US 11941937 B2, US 11765300 B1, and US 11509791 B1, in view of the prior art as applied below.
Both the pending claims and the conflicting patents are all directed to identifying infrared security marks. Therefore, all of the conflicting patents are directed to the same problem as the present application. Further, any differences between the present claims and the claims in any of the conflicting patents are obvious in view of the prior art as applied below. It would have been obvious to one of ordinary skill in the art, before the effective filing date, to combine the below prior art with any of the conflicting patents for implementation details (especially as the patent claims lack implementation details). Based on the findings herein, this is an example of “(A) Combining prior art elements according to known methods to yield predictable results.” MPEP 2143.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 (all claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
MPEP 2163(I) states “To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.”
Specification, [0003] states “Further, to read such security marks, devices such as IR scanners, IR cameras, or specific IR light sources are needed.” The detailed description is silent on the use of any of these technologies. Thus, one would expect the specification to propose a new way to read an infrared security mark. However, the specification only discusses using RGB data, e.g., specification [0035] and [0053]. There is no explanation in the specification as to how taking red, green, and blue data (i.e., visible light) would provide insight on infra-red marks because these marks are not visible (i.e., not red, green, or blue) (Specification, [0032] and [0035]).
The examiner’s review of the art shows that silicon based detectors can detect infrared. See, e.g., “What is an RGB-IR camera? How does an RGB-IR camera work?,” Prabu Kumar, e-con Systems, October 15, 2024, retrieved from https://www.e-consystems.com/blog/camera/technology/what-is-an-rgb-ir-camera-how-does-an-rgb-ir-camera-work/. However, the specification is silent on technologies such as filtering (i.e., by wavelength) or sensor implementation. Instead, the specification states “Further, to read such security marks, devices such as IR scanners, IR cameras, or specific IR light sources are needed.” Specification, [0003]. The specification also states “Techniques to allow regular scanners to read the infrared security marks are needed.” Specification, [0003]. This demonstrates that the inventors were not aware that silicon based detectors can detect infrared.
Therefore, all claims are rejected for lack of written description support because the invention is directed at “extracting an infrared security mark” (e.g., title, claim 1), but there is no disclosure of technologies that can detect infrared.
All claims are additionally rejected for lack of written description because while the specification provides a significant amount of guidance on analyzing light in the visible spectrum (e.g., Fig. 4, steps 406-412), the specification does not explain the relevance of this. That the specification devotes so much disclosure to something without explaining why leaves the reader confused, and weighs against a finding that the inventors had possession.
Claims 1, 7, 13, and 17 (all the independent claims) recite “obtaining color information from the portion.” First, this is broader than the summary of the invention’s “obtaining a known color information.” Specification, [0005]. In other words, the specification assumes that the color information is provided from an outside source, but the claim is broadened to use any color information, i.e., not necessarily the particular information.
Claims 1, 7, 13, and 17 (all the independent claims) recite “extracting a portion of the document, the portion including the IR security mark,” but this is unlimited functional claiming because it is not known how the portion is identified. MPEP 2173.05(g). In other words, given a document with an invisible mark, how does the method known which portion contains the invisible mark?
Claims 1, 7, 13, and 17 (all the independent claims) recite “extracting the IR security mark from the foreground image and the adjacent foreground image,” but this is unlimited functional claiming because it is not known what the relationship is between the images and the security mark. MPEP 2173.05(g).
Dependent claims are likewise rejected.
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 (all claims) 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.
Claims 1, 7, 13, and 17 (all the independent claims) recite “color information,” but this is new terminology. MPEP 2173.05(a). Note that color information is not limited to, for example, RGB values, but could include “wherein the color information comprises: predefined color intensity values.” (Claim 9). This rejection applies to all of the various types of “color information,” such as “adjacent foreground color information.”
Claim 12 recites “security mark detection module,” but this is new terminology. MPEP 2173.05(a).
Dependent claims are likewise rejected.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 (all claims) are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by US20240083190A1 (“Bichlmeier”).
The below claim rejections refer to the European Search Report (“EPO”) in the file as of December 22, 2025 (submitted by Applicant via IDS).
Claim 1 is rejected as per EPO claim 1.
Claim 2 is rejected as per EPO claim 5.
3. The method of claim 1, wherein analyzing, based on the foreground color information, comprises: comparing color intensity values of the one or more foreground parts of the portion with the foreground color information. (Bichlmeier, claim 23, “wherein the IR absorption intensity of at least two partial regions of the first areal region and/or of at least two partial regions of the second areal region is different.” See also the mapping of EPO claim 2.)
Claim 4 is rejected as per claim 3.
Claim 5 is rejected as per EPO claim 11.
Claim 6 is rejected as per EPO claim 12.
Claims 7 and 8 are rejected as per claim 1. Additionally, Bichlmeier, [0006] teaches machines to read the security feature. This meets the definition of “multi-function device” from specification [0016] and teaches claim 8’s memory.
Claims 9-20 are rejected as per their counterpart claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID ORANGE whose telephone number is (571)270-1799. The examiner can normally be reached Mon-Fri, 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gregory Morse can be reached at 571-272-3838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID ORANGE/Primary Examiner, Art Unit 2663
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