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 .
Allowable Subject Matter
Claims 12-16 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 Patel reference (discussed in greater depth infra), which is the prior art closest to Applicants’ claimed invention, and there would be no obvious reason to modify Patel to the extent necessary to satisfy each of Applicants’.
With respect to claim 12 (and claims 13-16 depending therefrom), the provision of a marker portion not containing a fluorescent pigment therein is well known, but providing such a configuration in the Patel invention would be contrary to Patel’s base teaching that each of its constituent portions contains a UV fluorescent pigment, and would therefore interfere with the ability of the Patel invention’s ability 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 Patel assembly incapable of continuing to operate/behave in the particular manner set forth within the reference itself (given the particularly sensitive nature of such light-sensitive security assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
Claims 12-16 would be allowable if rewritten to overcome the rejection 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 12-16 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 12 recitation of “one or more of the marker portions may be blank wherein the portion does not contain a fluorescent pigment” conflicts with Applicants’ newly amended claim 1 (from which claim 12 indirectly depends), which now recites in part, “the marker portions comprise at least one UV fluorescent pigment”. Accordingly, Applicants are encouraged to review/revise/clarify the exact intended nature of the configuration sought within claim 12.
Claims 13-16 are rejected as depending (directly or indirectly) from rejected claim 12.
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, 8-11, 17-18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2009/0014999 to Patel et al. (“Patel”).
Regarding claim 1, Patel anticipates a security or identification system (e.g. arrangement of high security thread 26, as shown in fig. 3 and discussed at para. 87) including an application (fig. 3) of two or more (fig. 3) marker portions (e.g. ethyl acetate based adhesive mixed with UV fluorescent pigments to form indicia letters 27-31, as shown in fig. 3 and discussed at para. 86-87) to a surface (e.g. high security thread 26, as shown in fig. 3 and discussed at para. 87), said marker portions (aforementioned adhesive mixed with UV fluorescent pigments) including: i) one or more compounds or mixture of compounds (note that the aforementioned mixture of adhesive and UV fluorescent pigments is a compound) that fluoresce (note the name “UV fluorescent pigments”) under exposure to electromagnetic radiation (e.g. ultraviolet light discussed at para. 82 and 87); ii) wherein in that the marker portions (aforementioned adhesive mixed with UV fluorescent pigments) emit light (note that fluorescent materials emit light after absorbing light; note that the aforementioned UV fluorescent pigments are exposed to ultraviolet light per para. 82 and 87 thereafter will emit light in red, yellow and green) at different wavelengths to each other (note that red, yellow and green exist at different wavelengths along the color spectrum) when exposed to (para. 82 and 87) said electromagnetic radiation (aforementioned ultraviolet light), said electromagnetic radiation (aforementioned ultraviolet light) being UV radiation (note that ultraviolet light is ultraviolet radiation); and iii) wherein the compounds (note that the aforementioned mixture of adhesive and UV fluorescent pigments is a compound) that fluoresce (note that at least the UV fluorescent pigments within the aforementioned mixture will fluoresce, thereby causing the entire mixture to appear to fluoresce) under UV radiation (aforementioned ultraviolet light) are ultraviolet pigments (note the name “UV fluorescent pigments”) that fluoresce (note the name “UV fluorescent pigments”) at different wavelengths or fluoresce different colours (para. 87) on exposure (para. 87) to the UV radiation (aforementioned ultraviolet light), and the marker portions (aforementioned adhesive mixed with UV fluorescent pigments) comprise (para. 86) at least one UV fluorescent pigment (aforementioned UV fluorescent pigments discussed at para. 86-87) dissolved or suspended in (para. 86) a carrier fluid (aforementioned ethyl acetate based adhesive discussed at para. 86).
Regarding claim 8, Patel anticipates a system according to claim 1 wherein the carrier fluid (aforementioned ethyl acetate based adhesive discussed at para. 86) is a gel and/or liquid polymer (note that ethyl acetate adhesive is provided in gel form; also see list of polymers discussed at para. 79).
Regarding claim 9, Patel anticipates a system according to claim 1 wherein the marker portions (aforementioned adhesive mixed with UV fluorescent pigments) are applied to a surface (26) as bands, stripes and/or lines (e.g. lines forming “INDIA” message shown in fig. 3).
Regarding claim 10, Patel anticipates a system according to claim 9 wherein the bands, stripes or lines (aforementioned lines forming “INDIA” message) are adjacent (fig. 3) and/or substantially parallel and the adjacent bands, stripes or lines (aforementioned lines forming “INDIA” message) contain different UV pigments and/or combination of different UV pigments (aforementioned UV fluorescent pigments discussed at para. 86-87).
Regarding claim 11, Patel anticipates a system according to claim 9 wherein the marker portions (aforementioned adhesive mixed with UV fluorescent pigments) are applied as three or more (fig. 3) bands, stripes or lines (e.g. lines forming “INDIA” message shown in fig. 3).
Regarding claim 17, Patel anticipates a system according to claim 1 wherein the system (aforementioned arrangement of high security thread 26 includes one or more polymer (see list of polymers discussed at para. 79) marker portions (aforementioned adhesive mixed with UV fluorescent pigments) containing one or more identification polymers (para. 79).
Regarding claim 18, Patel anticipates a system according to claim 17 wherein the identification polymers (para. 79) include identifiable polymers (para. 79), copolymers (para. 79), block copolymers (para. 79), DNA and/or RNA oligonucleotides (para. 34), and/or Molecular Imprinted Polymers (MIP).
Regarding claim 20, Patel anticipates a system according to claim 18 wherein the identification polymers (para. 79) are included in a carrying solution (aforementioned ethyl acetate based adhesive discussed at para. 86) to form their own band, stripe or line (e.g. lines forming “INDIA” message shown in fig. 3) located within a colour band (para. 86).
Response to Arguments
In response to Applicants’ claim amendments, a further search of the pertinent area of prior art was executed. The aforementioned Patel reference was identified within said search. 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
Applicant's amendment necessitated the new grounds 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
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