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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 2/16/25 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/16/25 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,192,428. Although the claims at issue are not identical, they are not patentably distinct from each other.
Present Application
Patent No. 12,192,428
1. (Previously Amended) A method for rendering a security mark, comprising:
providing a security mark with a metameric pair of infrared inks, wherein a spectral reflectance of the two metameric inks among the metameric pair of inks differs for CMYK for K in infrared; and
configuring a first metameric ink among the metameric pair of infrared inks to comprise more K than a second metameric ink among the metameric pair of infrared inks,
wherein when a document containing the security mark is scanned, pixels in the first metameric ink are filtered to destroy the security mark.
1. A method for rendering a security mark, comprising:
providing a security mark with a metameric pair of infrared inks, wherein a spectral reflectance of the two metameric inks among the metameric pair of inks differs for CMYK for K in infrared; and
configuring a first metameric ink among the metameric pair of infrared inks to comprise more K than a second metameric ink among the metameric pair of infrared inks,
wherein when a document containing the security mark is scanned, a number of K pixels in the first metameric ink are filtered to destroy the security mark when viewed through an infrared camera.
19. (Previously Amended) A system for rendering a security mark, comprising:
at least one processor and a memory, the memory storing instructions to cause the at least one processor to perform:
providing a security mark with a metameric pair of infrared inks, wherein a spectral reflectance of the two metameric inks among the metameric pair of inks differs for CMYK for K in infrared; and
configuring a first metameric ink among the metameric pair of infrared inks to comprise more K than a second metameric ink among the metameric pair of infrared inks,
wherein when a document containing the security mark is scanned, a K pixels in the first metameric ink are filtered to destroy the security mark.
19. A system for rendering a security mark, comprising:
at least one processor and a memory, the memory storing instructions to cause the at least one processor to perform:
providing a security mark with a metameric pair of infrared inks, wherein a spectral reflectance of the two metameric inks among the metameric pair of inks differs for CMYK for K in infrared; and
configuring a first metameric ink among the metameric pair of infrared inks to comprise more K than a second metameric ink among the metameric pair of infrared inks,
wherein when a document containing the security mark is scanned, a number of K pixels in the first metameric ink are filtered to destroy the security mark when viewed through an infrared camera.
Allowable Subject Matter
Claims 1-20 would be allowed IF the above matters were cured with an appropriate terminal disclaimer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US PG Pub 2016/0283817 to Wang et al. discloses a method that involves extracting connected components from binary image corresponding to document image. The connected components are clustered based on grayscale features of the connected components to obtain a clustering center. Searching for combination, which causes evaluation value based on the grayscale features of the connected components to be higher than evaluation threshold, is performed within numerical ranges of clustering radius from the clustering center and grayscale threshold. Mark is removed in the document image based on the grayscale threshold in the combination
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER D. WAIT, Esq. whose telephone number is (571)270-5976. The examiner can normally be reached Monday-Friday, 9:30- 6:00.
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CHRISTOPHER D. WAIT, Esq.
Primary Examiner
Art Unit 2683
/CHRISTOPHER WAIT/Primary Examiner, Art Unit 2683
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