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 .
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 14-19 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.
The claim 14 recitation of “a plane with a dimension that is a longest plane dimension” is unclear. Exactly what structure/configuration is sought? The Office recognizes a mention of “longest plane dimension” within paragraph 52 of Applicants’ originally filed specification, but this passage does not establish a clear definition of precisely what is intended. Accordingly, please review/revise/clarify.
Claims 15-19 are rejected as depending from rejected independent claim 14.
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 1-2, 4, 8-14, 17 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2005/0123755 to Argoitia et al. (“Argoitia”).
Regarding claim 1, Argoitia anticipates a flake (10, as shown in fig. 1A and discussed at para. 26), comprising: i) a layer of a diamagnetic material (e.g. substrate 12, as shown in fig. 1A and discussed at para. 26; per para. 27, this substrate layer may be made of bismuth oxychloride- containing bismuth therein); and ii) at least one additional layer (e.g. magnetic material 14, reflective material 16, dielectric material 18 or absorber layer 19, as shown in fig. 1A and discussed at para. 26) present on (fig. 1A) a first surface (e.g. upper surface, as shown in fig. 1A) and at least one additional layer (e.g. magnetic material 14’, reflective material 16’, dielectric material 18’ or absorber layer 19’, as shown in fig. 1A and discussed at para. 26) present on (fig. 1A) a second surface (e.g. lower surface, as shown in fig. 1A) of the layer of the diamagnetic material (12), iii) wherein the layer of the diamagnetic material (12) is a central layer (fig. 1A) in the flake (10).
Regarding claim 2, Argoitia anticipates the flake of claim 1, wherein the diamagnetic material (12) is chosen from bismuth (para. 27), copper (para. 27), mercury, silver (para. 27), gold (para. 27), palladium (para. 27), beryllium, calcium (para. 27), zinc (para. 27), lead, cadmium, thallium, AgCl, BiCl3 and an organic compound (para. 27).
Regarding claim 4, Argoitia anticipates the flake of claim 1, wherein the diamagnetic material (12) is bismuth (para. 27).
Regarding claim 8, Argoitia anticipates the flake of claim 1, wherein the at least one additional layer (14, 16, 18 or 19) present on (fig. 1A) the first surface (aforementioned upper surface) and the at least one additional layer (14’, 16’, 18’ or 19’) present on (fig. 1A) the second surface (aforementioned lower surface) are chosen from a reflector layer, an absorber layer, and a dielectric layer (para. 26).
Regarding claim 9, Argoitia anticipates the flake of claim 1, wherein the flake (10) is symmetric (para. 26).
Regarding claim 10, Argoitia anticipates the flake of claim 1, wherein the flake (10) is asymmetric (i.e. unsymmetrical, per para. 26).
Regarding claim 11, Argoitia anticipates a composition (e.g. carriers discussed at para. 83), comprising: i) a plurality of (para. 83) flakes (10) of claim 1 dispersed in (para. 83) a liquid medium (e.g. paint or ink discussed at para. 83).
Regarding claim 12, Argoitia anticipates a security device, comprising: i) a substrate (e.g. paper discussed at para. 83); and ii) a composition (e.g. carriers discussed at para. 83) comprising a plurality of flakes (10) of claim 1 dispersed in (para. 83) a cured (i.e. dried, as discussed at para. 83) transparent medium (e.g. ink discussed at para. 83), wherein the composition (aforementioned carriers) is on a surface (para. 83) of the substrate (aforementioned paper).
Regarding claim 13, Argoitia anticipates the security device of claim 12, wherein the substrate (aforementioned paper) is chosen from polyethylene terephthalate, glass foil, glass sheets, polymeric foils, polymeric sheets, metal foils, metal sheets, ceramic foils, ceramic sheets, ionic liquid, paper (para. 83) and silicon wafers.
Regarding claim 14, Argoitia anticipates a method of making (i.e. technique for producing diffractive optically-variable image devices “DOVID”s, as discussed at para. 9) a security (para. 73) device (aforementioned DOVID), comprising: i) dispersing a plurality of (e.g. flakes discussed at para. 40) flakes (e.g. multiple instances of magnetic flake 40, as shown in fig. 2A and discussed at para. 40) in a liquid medium (e.g. liquid carrier discussed at para. 40) to form a composition (e.g. ink or clear paint discussed at para. 40), the flakes (aforementioned multiple instances of magnetic flake 40, which may be made in the manner of flake 10 shown in fig. 1A) including (fig. 1A) a layer of a diamagnetic material (e.g. substrate 12, as shown in fig. 1A and discussed at para. 26; per para. 27, this substrate layer may be made of bismuth oxychloride- containing bismuth therein) and at least one additional layer (e.g. magnetic material 14 and 14’, reflective material 16 and 16’, dielectric material 18 and 18’ or absorber layer 19 and 19’, as shown in fig. 1A and discussed at para. 26), the flakes (aforementioned multiple instances of magnetic flake 40, which may be made in the manner of flake 10 shown in fig. 1A) having a plane (e.g. plane of substrate 12, as shown in fig. 1) with a dimension that is a longest plane dimension (compare figs. 1 and 2A) of the flakes (aforementioned multiple instances of magnetic flake 40); ii) applying the composition (aforementioned ink or clear paint) to a substrate (e.g. surface discussed at para. 40) to form a security device (e.g. bank note, traveler’s check, software media or credit card discussed at para. 81); iii) applying a magnetic field (para. 41) to the security device (aforementioned bank note, traveler’s check, software media or credit card) so that the plane of the flakes (40) align perpendicular to the magnetic field (per para. 37, flakes can be aligned as desired), and iv) curing (para. 40) the aligned flakes (40) perpendicular to the magnetic field (note that flakes are aligned as desired, as indicated supra; also note that curing operation of para. 40 is executed on the entire composition, including at angles perpendicular to the magnetic field applied to align the flakes).
Regarding claim 17, Argoitia anticipates the method of claim 14, wherein the layer of a diamagnetic material (12) is a central layer (fig. 1A) in the flakes (10).
Regarding claim 19, Argoitia anticipates the method of claim 14, wherein the magnetic field (para. 41) is from a magnet having a ring shape (e.g. annular magnet discussed at para. 90).
Regarding claim 20, Argoitia anticipates the flake of claim 1, wherein the diamagnetic material (12) is an organic compound (per para. 27, substrate 12 may be made from polymer material; note that polymers exist in organic forms).
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 3, 5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Argoitia in view of U.S. Patent Application Publication No. 2017/0291401 to Yamane et al. (“Yamane”).
Regarding claim 3, Argoitia discloses the flake of claim 1, but does not disclose wherein the diamagnetic material (12) is an organic compound chosen from aniline, benzene, methane, octane, naphthalene and diphenylamine.
Yamane teaches the concept of using aniline material (para. 74).
Given that Argoitia and Yamane both pertain to the production of coatings having pigment flakes incorporated therein (see Argoitia para. 40 and Yamane para. 74), it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the Yamane aniline material to form the Argoitia substrate 12, in order to provide the benefit of yielding a resultant Argoitia pigment having black properties (see Yamane para. 74) therein, thus rendering an aesthetic appearance as desired.
Regarding claim 5, Argoitia discloses a flake (10, as shown in fig. 1A and discussed at para. 26), comprising: i) a layer of diamagnetic material (e.g. substrate 12, as shown in fig. 1A and discussed at para. 26; per para. 27, this substrate layer may be made of bismuth oxychloride- containing bismuth therein); ii) at least one additional layer (e.g. magnetic material 14, reflective material 16, dielectric material 18 or absorber layer 19, as shown in fig. 1A and discussed at para. 26) present on (fig. 1A) a first surface (e.g. upper surface, as shown in fig. 1A) and at least one additional layer (e.g. magnetic material 14’, reflective material 16’ or dielectric material 18’ or absorber layer 19’, as shown in fig. 1A and discussed at para. 26) present on (fig. 1A) a second surface (e.g. lower surface, as shown in fig. 1A) of the layer of the diamagnetic material (12), iii) wherein the layer of diamagnetic material (12) is a central layer (fig. 1A) in the flake (10).
Argoitia does not disclose wherein the diamagnetic material (12) has a volume magnetic susceptibility ranging from -2.00 x 106 to -300.0 x 106.
Yamane teaches the concept of using a material (e.g. aniline, as discussed at para. 74) having a volume magnetic susceptibility ranging from -2.00 x 106 to -300.0 x 106 (note that aniline has a magnetic susceptibility of -62.95 x 10-6 cm3/mol).
For the reasons set forth in the rejection of claim 3, supra, it would have been obvious to use the Yamane aniline material to form the Argoitia substrate 12.
Regarding claim 18, Argoitia discloses the method of claim 14, wherein the at least one additional layer (14/14’, 16/16’, 18/18’ or 19/19’) includes a reflector layer (16) in contact with (fig. 1A; per para. 26, the reflective layer 16/16’ itself is magnetic, so intervening magnetic material 14/14’ may be omitted) a first surface (aforementioned upper surface) of the layer of the diamagnetic material (12); and at least two additional layers (18 and 19) including a dielectric layer (18) and an absorber layer (19), the dielectric layer (18) being in contact with (fig. 1A) the reflector layer (16) and the absorber layer (19) being in contact with (fig. 1A) the dielectric layer (18).
Argoitia does not disclose wherein the diamagnetic material (12) has a volume magnetic susceptibility ranging from -2.00 x 106 to -300.0 x 106.
Yamane teaches the concept of using a material (e.g. aniline, as discussed at para. 74) having a volume magnetic susceptibility ranging from -2.00 x 106 to -300.0 x 106 (note that aniline has a magnetic susceptibility of -62.95 x 10-6 cm3/mol).
For the reasons set forth in the rejection of claim 3, supra, it would have been obvious to use the Yamane aniline material to form the Argoitia substrate 12.
Claims 6-7 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Argoitia.
Regarding claim 6, Argoitia discloses the flake of claim 1, wherein the layer of the diamagnetic material (12) has a physical thickness (fig. 1A).
Argoitia does not disclose said thickness ranging from 250 nm to 3000 nm.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular chosen thickness of the diamagnetic material will determine the ultimate aesthetic appearance of the flake presented to an ostensible user.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date to select a thickness of the diamagnetic material layer as desired, in order to yield a resultant aesthetic appearance of the flake as desired.
Regarding claim 7, Argoitia discloses the flake of claim 1, wherein the layer of the diamagnetic material (12) has a physical thickness (fig. 1A).
Argoitia does not disclose said thickness ranging from 950 nm to 3000 nm.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular chosen thickness of the diamagnetic material will determine the ultimate aesthetic appearance of the flake presented to an ostensible user.
For the reasons set forth in the rejection of claim 6, supra, it would have been obvious to select a thickness of the diamagnetic material layer as desired.
Regarding claim 15, Argoitia discloses the method of claim 14, but does not disclose wherein application of the magnetic field (para. 41) is for a period of time greater than 10 seconds.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular selected magnetic field application time will determine the extent to which magnetic flakes 10 are aligned, and thus determine the ultimate aesthetic appearance of the assembly presented to an ostensible user.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date to select a magnetic field application time as desired in order to yield a resultant aesthetic appearance of the assembly as desired.
Regarding claim 16, Argoitia discloses the method of claim 14, wherein application of the magnetic field (para. 41) is from a magnet (para. 90).
Argoitia does not disclose said magnet having a maximum energy product greater than 3.5.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular selected maximum energy product of the magnet will determine the extent to which magnetic flakes 10 are aligned, and thus determine the ultimate aesthetic appearance of the assembly presented to an ostensible user.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date to select a magnet maximum energy product as desired in order to yield a resultant aesthetic appearance of the assembly as desired.
Response to Arguments
In response to Applicants’ argument that bismuth oxychloride is not a diamagnetic material (pgs. 9-10) Applicants are encouraged to see “Hydrogen influenced the structure and optical properties of Ni-doped BiOCl nanocomposite: creation of FM properties”, written by A.A. Dakhel (“Dakhel”)- a copy of which may be found attached to the instant Office Action. Within section 1-Introduction, the author writes, “[t]he present study is aimed to synthesize and introduce stable RT-FM properties to naturally diamagnetic (DM) BiOCl crystal….” Additionally, within section 3.3- Magnetic characterization, the author writes “[i]t was known that undoped BiOCl compound has diamagnetic (DM) behavior….” In view of the foregoing, the Office recognizes bismuth oxychloride as diamagnetic material, containing bismuth therein.
Additionally, Applicants’ material claim amendments have yielded an altered interpretation/application of the Argoitia reference, and an addition of the Yamane reference, set forth supra. Accordingly, in light of Applicants’ amendments, previously objected claims 3, 5 and 18 are now rejected in the instant Office Action.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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