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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06 May 2026 has been entered.
Allowable Subject Matter
Claims 16 and 18 are 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 Raksha ‘116 and Raksha ‘485 reference (discussed in greater depth infra), which represent the prior art combination closest to Applicants’ claimed invention, and there would be no obvious reason to modify Raksha ‘116 and Raksha ‘485 to the extent necessary to satisfy each of Applicants’ pertinent limitations.
With respect to the claims, the provision the respective elements by themselves is known, but providing such elements in the Raksha ‘116/Raksha ‘485 combined assembly, specifically arranged as Applicants require, would require a modification of an already-modifying reference, and would interfere with the ability of the respective references to perform as intended.
In view of the foregoing, the modifications necessary to satisfy each of Applicants’ claim limitations would be likely to render the Raksha ‘116/Raksha ‘485 assembly incapable of continuing to operate/behave in the particular manner set forth within the references themselves (given the particularly sensitive nature of such optical security assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
Claims 16 and 18 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 12-13, 14-16 and 18-19 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.
Claim 12 recites the limitation "the substrate". There is insufficient antecedent basis for this limitation in the claim. Note that there is no clear and unambiguous indication that this is supposed to refer to the “substrate” recited in claim 1, as Applicants later provide in association within the limitation “a composition comprising a plurality of flakes of claim 1”. Please review/revise/clarify.
Claim 14 recites the limitation "the plane of the flakes". There is insufficient antecedent basis for this limitation in the claim.
The claim 14 recitation of “a longest plane of each of the flakes” is unclear, as it is unknown how any plane may have a specific length measurement. Note that a plane is a flat two-dimensional surface extending infinitely in all directions. Exactly what structure/configuration is sought? Please review/revise/clarify.
Claims 13, 15-16 and 18-19 are rejected as depending from rejected independent claims 12 and 14.
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 1-2, 5-15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2012/0001116 to Raksha et al. (“Raksha ‘116”) in view of U.S. Patent Application Publication No. 2014/0077485 to Raksha et al. (“Raksha ‘485”).
Regarding claim 1, Raksha ‘116 discloses a flake (e.g. pigment flake 100, as shown in fig. 1A and discussed at para. 29), comprising: i) a layer (e.g. opaque reflecting layer 111, as shown in fig. 1A and discussed at para. 29) of a diamagnetic material (per para. 25, an opaque layer of reflective material may be formed using copper, silver, gold or palladium; note that paragraph 24 of Applicants’ filed specification provides that these are all examples of diamagnetic material); and ii) at least one additional layer (e.g. upper instance of transparent dielectric layer 120, as shown in fig. 1A and discussed at para. 29) present on (fig. 1A) a first surface (e.g. upper surface of layer 111, as shown in fig. 1A) and at least one additional layer (e.g. lower instance of transparent dielectric layer 120, as shown in fig. 1A and discussed at para. 29) present on (fig. 1A) a second surface (e.g. lower surface of layer 111, as shown in fig. 1A) of the layer of the diamagnetic material (111), iii) wherein the layer of the diamagnetic material (111) is a central layer (fig. 1A) in the flake (100).
Raksha ‘116 does not disclose wherein the flake (100) is aligned vertically with a surface of a substrate.
Raksha ‘485 teaches the concept of providing a flake (e.g. flakes in regions 505 and 506, as shown in fig. 3 and discussed at para. 131) that is aligned vertically with (fig. 3 and para. 131; note that paragraphs 51-52 of Applicants filed specification provides that Applicants’ figs. 3A-B displays an example of this configuration; accordingly, compare Applicants’ figs. 3A-B and Raksha ‘485 fig. 3) a surface (e.g. upper surface, as shown in fig. 3) of a substrate (501, as shown in fig. 3 and discussed at para. 131).
Given that Raksha ‘116 flake 100 is intended to be placed atop a substrate and aligned by exposure to a magnetic field (para. 46), and Raksha ‘485 flakes 505-506 are actually placed atop a substrate (501) and exposed to a magnetic field (para. 13) for flake alignment purposes (para. 13), 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 Raksha ‘485 substrate (501) and magnetic field vertical alignment teachings to the flakes 100 of Raksha ‘116, in order to provide the benefit of yielding a resultant Raksha ‘116 assembly that is optimally secure from successful counterfeiting and presenting an aesthetic design as desired.
Regarding claim 2, Raksha ‘116 in view of Raksha ‘485 discloses the flake of claim 1, wherein the diamagnetic material is chosen from bismuth, copper (Raksha ‘116 para. 25), mercury, silver (Raksha ‘116 para. 25), gold (Raksha ‘116 para. 25), palladium (Raksha ‘116 para. 25), beryllium, calcium, zinc, lead, cadmium, thallium, AgCl, BiCl3 and an organic compound.
Regarding claim 5, Raksha ‘116 discloses a flake (e.g. pigment flake 100, as shown in fig. 1A and discussed at para. 29), comprising: i) a layer (e.g. opaque reflecting layer 111, as shown in fig. 1A and discussed at para. 29) of a diamagnetic material (per para. 25, an opaque layer of reflective material may be formed using copper, silver, gold or palladium; note that paragraph 24 of Applicants’ filed specification provides that these are all examples of diamagnetic material); and ii) at least one additional layer (e.g. upper instance of transparent dielectric layer 120, as shown in fig. 1A and discussed at para. 29) present on (fig. 1A) a first surface (e.g. upper surface of layer 111, as shown in fig. 1A) and at least one additional layer (e.g. lower instance of transparent dielectric layer 120, as shown in fig. 1A and discussed at para. 29) present on (fig. 1A) a second surface (e.g. lower surface of layer 111, as shown in fig. 1A) of the layer of the diamagnetic material (111), iii) wherein the layer of the diamagnetic material (111) is a central layer (fig. 1A) in the flake (100); and iv) wherein the diamagnetic material (111) has a volume magnetic susceptibility ranging from -2.00 x 106 to -300.0 x 106 (note that copper has a volume magnetic susceptibility value between -9.6 x 10-6 and -9.7 x 10-6).
Raksha ‘116 does not disclose wherein the flake (100) is aligned vertically with a surface of a substrate.
Raksha ‘485 teaches the concept of providing a flake (e.g. flakes in regions 505 and 506, as shown in fig. 3 and discussed at para. 131) that is aligned vertically with (fig. 3 and para. 131; note that paragraphs 51-52 of Applicants filed specification provide that Applicants’ figs. 3A-B displays an example of this configuration; accordingly, compare Applicants’ figs. 3A-B and Raksha ‘485 fig. 3) a surface (e.g. upper surface, as shown in fig. 3) of a substrate (501, as shown in fig. 3 and discussed at para. 131).
For the reasons set forth in the rejection of claim 1, supra, it would have been obvious to apply the Raksha ‘485 substrate (501) and magnetic field vertical alignment teachings to the flakes 100 of Raksha ‘116.
Regarding claim 6, Raksha ‘116 in view of Raksha ‘485 discloses the flake of claim 1, wherein the layer of the diamagnetic material (Raksha ‘116 111) has a physical thickness ranging from 250 nm to 3000 nm (Raksha ‘116 para. 24).
Regarding claim 7, Raksha ‘116 in view of Raksha ‘485 discloses the flake of claim 1, wherein the layer of the diamagnetic material (Raksha ‘116 111) has a physical thickness ranging from 950 nm to 3000 nm (Raksha ‘116 para. 24).
Regarding claim 8, Raksha ‘116 in view of Raksha ‘485 discloses the flake of claim 1, wherein the at least one additional layer (aforementioned upper instance of Raksha ‘116 transparent dielectric layer 120) present on (Raksha fig. 1A) the first surface (aforementioned upper surface of Raksha ‘116 layer 111) and the at least one additional layer (aforementioned lower instance of Raksha ‘116 transparent dielectric layer 120) present on (Raksha fig. 1A) the second surface (aforementioned lower surface of Raksha ‘116 layer 111) are chosen from a reflector layer, an absorber layer, and a dielectric layer (note the name “dielectric layer 120”).
Regarding claim 9, Raksha ‘116 in view of Raksha ‘485 discloses the flake of claim 1, wherein the flake (Raksha ‘116 100) is symmetric (Raksha ‘116 fig. 1A).
Regarding claim 10, Raksha ‘116 in view of Raksha ‘485 discloses the flake of claim 1, wherein the flake (Raksha ‘116 100) is asymmetric (per Raksha ‘116 para. 19, one or more magnetic layers may be provided as desired).
Regarding claim 11, Raksha ‘116 in view of Raksha ‘485 discloses a composition (e.g. magnetic coating composition discussed at Raksha ‘116 para. 17), comprising: i) a plurality of flakes (Raksha ‘116 100) of claim 1 (Raksha ‘116 para. 17) dispersed in a liquid medium (e.g. binder medium discussed at Raksha ‘116 para. 42).
Regarding claim 12, Raksha ‘116 in view of Raksha ‘485 discloses a security device, comprising: i) the substrate (Raksha ‘485 501); and ii) a composition (e.g. magnetic coating composition discussed at Raksha ‘116 para. 17) comprising a plurality of flakes (Raksha ‘116 100) of claim 1 (Raksha ‘116 para. 17) dispersed in a cured (Raksha ‘116 para. 42) transparent (e.g. at least minimally transparent, so as to allow aforementioned Raksha ‘116 flake 100 therein to be viewed) medium (e.g. binder medium discussed at Raksha ‘116 para. 42), wherein the composition (aforementioned magnetic coating composition discussed at Raksha ‘116 para. 17) is on a surface (see the combination set forth in the rejection of claim 1, supra) of the substrate (Raksha ‘485 501).
Regarding claim 13, Raksha ‘116 in view of Raksha ‘485 discloses the security device of claim 12, wherein the substrate (Raksha ‘485 501) is chosen from polyethylene terephthalate, glass foil, glass sheets, polymeric foils, polymeric sheets (Raksha ‘485 para. 192 and 194), metal foils, metal sheets, ceramic foils, ceramic sheets, ionic liquid, paper (Raksha ‘485 para. 140, 169 and 194) and silicon wafers.
Regarding claim 14, Raksha ‘116 discloses a method of making (i.e. providing, as discussed at para. 5) a security device (e.g. security document, as discussed at para. 43), comprising: i) dispersing a plurality (para. 42) of flakes (e.g. pigment flakes 100, as shown in fig. 1A and discussed at para. 29) in a liquid medium (e.g. binder medium discussed at para. 42) to form a composition (e.g. coating composition discussed at para. 42-43), the flakes (100) including a layer (e.g. opaque reflecting layer 111, as shown in fig. 1A and discussed at para. 29) of a diamagnetic material (per para. 25, an opaque layer of reflective material may be formed using copper, silver, gold or palladium; note that paragraph 24 of Applicants’ filed specification provides that these are all examples of diamagnetic material) and at least one additional layer (e.g. upper and lower instances of transparent dielectric layer 120, as shown in fig. 1A and discussed at para. 29); ii) applying (i.e. printing, as discussed at para. 32) the composition (aforementioned coating composition) to a substrate (e.g. paper substrate discussed at para. 32) to form a security device (e.g. security document discussed at para. 43); iii) applying a magnetic field (para. 19) to the security device (aforementioned security document), and iv) curing (para. 46) the flakes (100).
Raksha ‘116 does not disclose: i) the plane (e.g. the plane of coating composition in which the flakes 100 lie) of the flakes (100) being aligned perpendicular to the magnetic field (para. 19), and ii) curing the aligned flakes (100) perpendicular to the magnetic field (para. 19), wherein a longest plane of each of the flakes (100) is aligned parallel with the magnetic field (para. 19).
Raksha ‘485 teaches the concept of providing: i) a plane (e.g. plane of clear binder 504, as shown in fig. 3, in which flakes in regions 505 and 506 lie) of flakes (e.g. flakes in regions 505 and 506, as shown in fig. 3 and discussed at para. 131) that is aligned perpendicular to (fig. 3) a magnetic field (e.g. the magnetic field that aligns upright flakes in regions 505 and 506, as shown in fig. 3); and ii) curing (para. 190) the aligned flakes (aforementioned flakes in regions 505 and 506) perpendicular to (fig. 3) the magnetic field (aforementioned magnetic field that aligns upright flakes in regions 505 and 506), wherein a longest plane (e.g. length dimension, as shown in fig. 3) of each of the flakes (aforementioned flakes in regions 505 and 506) is aligned parallel with (fig. 3) the magnetic field (aforementioned magnetic field that aligns upright flakes in regions 505 and 506).
For the reasons set forth in the rejection of claim 1, supra, it would have been obvious to apply the Raksha ‘485 substrate (501), magnetic field vertical alignment, and curing teachings to the flakes 100 of Raksha ‘116.
Regarding claim 15, Raksha ‘116 in view of Raksha ‘485 discloses the method of claim 14, but does not disclose wherein application of the magnetic field (Raksha ‘116 para. 46) 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 chosen duration of exposure to the magnetic field will determine the ultimate degree of flake alignment.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to expose the assembly to the Raksha ‘116 para. 46 magnetic field for a time period as desired.
Regarding claim 19, Raksha ‘116 in view of Raksha ‘485 discloses the method of claim 14, wherein the magnetic field (aforementioned magnetic field that aligns upright flakes in regions 505 and 506) is from a magnet having a ring shape (Raksha ‘485 para. 17).
Claims 3-4 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Raksha ‘116 in view of Raksha ‘485 and further in view of U.S. Patent Application Publication No. 2009/0301382 to Patel (“Patel”).
Regarding claim 3, Raksha ‘116 in view of Raksha ‘485 discloses the flake of claim 1, but does not disclose wherein the diamagnetic material (Raksha ‘116 111) is an organic compound chosen from aniline, benzene, methane, octane, naphthalene and diphenylamine.
Patel teaches the concept of providing an organic compound chosen from aniline (para. 716), benzene, methane, octane, naphthalene and diphenylamine (para. 717).
Given that Raksha ‘116 and Patel both concern pigment flakes utilized within magnetic field environments, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to form at least the Raksha ‘116 opaque reflecting layer 111 using Patel aniline or diphenylamine material, in order to provide the benefit of yielding a resultant more sophisticated assembly, unlikely to be successfully counterfeited.
Regarding claim 4, Raksha ‘116 in view of Raksha ‘485 discloses the flake of claim 1, but does not disclose wherein the diamagnetic material (Raksha ‘116 111) is bismuth.
Patel teaches the concept of providing bismuth (para. 884).
Given that Raksha ‘116 and Patel both concern pigment flakes utilized within magnetic field environments, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to form at least the Raksha opaque reflecting layer 111 using Patel bismuth material, in order to provide the benefit of yielding a resultant more sophisticated assembly, unlikely to be successfully counterfeited.
Regarding claim 20, Raksha ‘116 in view of Raksha ‘485 discloses the flake of claim 1, but does not disclose wherein the diamagnetic material (Raksha ‘116 111) is an organic compound.
Patel teaches the concept of providing an organic compound (e.g. aniline discussed at para. 716 and diphenylamine discussed at para. 717).
For the reasons set forth in the rejection of claim 3, supra, it would have been obvious to form at least the Raksha ‘116 opaque reflecting layer 111 using Patel aniline or diphenylamine material.
Response to Arguments
In view of Applicants’ claims amendments, a further search of the pertinent areas of prior art was executed. Within said search, the aforementioned Raksha ‘116, Raksha ‘485 and Patel references were identified. Accordingly, Applicants’ arguments have been considered, but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel J. Troy can be reached at (571) 270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637
Prosecution Insights