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 .
Summary
The Applicants arguments and claim amendments received on 03/27/2026 are entered into the file. Currently, claims 1-15 are amended; claims 16-19 are cancelled; claims 20-23 are new; resulting in claims 1-15 and 20-23 pending for examination.
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.
Claims 1, 3, 4, 6, 7, 9, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Phillips et al. (US 6,759,097; cited on IDS).
Regarding claims 1 and 4, Phillips et al. teaches coated articles, such as security documents, comprising images formed by color shifting magnetic pigment compositions (col. 1 Ln. 14-18). The magnetic pigment compositions are comprised of a magnetic flake (semi-transparent magnetic pigment) comprising a central magnetic layer (102; magnetic layer) of a magnetic material (semi-transparent, metallic magnetic material) having a first side and opposing second side, wherein the magnetic material (semi-transparent, metallic magnetic material) can be formed of any magnetic material such as nickel, cobalt, iron, gadolinium, terbium, dysprosium, erbium; and alloys such as Fe/Si, Fe/Ni, FeCo, Fe/Ni/Mo; hard magnetic materials such as SmCo5, NdCo5, SmCo17, Nd2Fe14B, Sr6Fe2O3, TbFe2, Al-Ni-Co; spinal ferrites such as Fe3O4, NiFe2O4, MnFe2O4, CoFe2O4; garnets such as YIG, GdIG; or soft magnetic materials (Figures 2, 3, 5; col. 9 Ln. 55-col. 10 Ln. 11), which are the same materials disclosed by the instant application for the claimed magnetic layer (see pg-pub [0039]). Phillips et al. further teaches that, when utilized as an absorber, the magnetic material is deposited to a thickness so that it is not substantially opaque (i.e. semi-transparent)(col. 10 Ln. 9-11).
Phillips et al. further teaches, as shown by at least Figures 3 and 5, that the magnetic material (semi-transparent, metallic magnetic material) is located at the center of the magnetic flake (semi-transparent magnetic pigment), wherein a first stack of dielectric layer (124/164a; first light interference cavity) and a second stack of dielectric layer (126/164b; second light interference cavity) are present on the first side and opposing second side of the magnetic material (semi-transparent, metallic magnetic material) (Fig. 3, 5; col. 11 Ln. 10-col. 13 Ln. 5). Phillips et al. teaches that the dielectric layers act as spacers in the thin film stack structure, and are formed to have an effective thickness for imparting interference color and desired color shifting properties (col. 11 Ln. 20-57).
The limitation regarding the claimed magnetic layer reciting “in response to an applied magnetic field, aligns the semi-transparent magnetic pigment along curved lines of the applied magnetic field to produce the semi-transparent magnetic pigment as a convex mirror” recites the intended use of the claimed semi-transparent magnetic pigment. As detailed in the above rejection, Phillips et al. teaches the same structure and materials as the instant application, and therefore, would be capable of performing in the manner claimed.
Regarding claim 3, Phillips et al. teaches all the limitations of claim 1 above, and further teaches that the magnetic material (semi-transparent, metallic magnetic material) is oriented by a magnetic field (col. 4 Ln. 18-35, col. 5 Ln. 60-col. 6 Ln. 37, col. 19 Ln. 1-20).
Regarding claims 6 and 7, Phillips et al. teaches all the limitations of claim 1 above, and further teaches that the first dielectric layer (124/164a; first light interference cavity) and the second dielectric layer (126/164b; second light interference cavity) can be formed of high/low dielectric optical stacks, which have alternating layers of low index and high index materials (col. 12 Ln. 33-58). Phillips et al. further teaches that the high refractive index material has a index of refraction greater than 1.65 and the low refractive index material has a refractive index of less than 1.65 (col. 11 Ln. 40-col. 12 Ln. 20).
Regarding claims 9, 11 and 12, Phillips et al. teaches all the limitations of claim 1 above, and further teaches a first absorber layer (128; metal material) on the outer surface of the first dielectric layer (124/164a; first light interference cavity) and a second absorber layer (103; metal material) on the outer surface of the second dielectric layer (126/164b; second light interference cavity), wherein both the first absorber layer (128; metal material) and the second absorber layer (103; metal material) are comprised of metallic materials such as chromium aluminum, nickel, palladium, platinum, cobalt, tin (Fig. 3, 5; col. 13 Ln. 5-60) which has also disclosed by the instant application as material used for the metal layer (see [0042] of pg-pub).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2, 5, 8, 10, 13, 14, 15, 20, 21, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Phillips et al. (US 6,759,097; cited on IDS).
Regarding claim 2, Phillips et al. teaches all the limitations of claim 1 above, and further teaches that the dielectric layers formed on either side of the magnetic layer can be comprised of multiple sublayers of two or more low refractive index materials, a mixture or multiple sublayers of two or more high index materials, or a mixture or multiple sublayers of low and high index materials forming a color shift (dichroic) that depends on the refractive index of the layers in the stack (col. 11 Ln. 20-col. 13 Ln. 5). Phillips et al. teaches that such pigment flakes making up the magnetic material (semi-transparent, metallic magnetic material) exhibit a first color at a first angle of incident light/viewing and a second color different from the first color at a second angle of incident light/viewing (col. 8 Ln. 15-35). Various high/low optical stacks can be used to enhance color shifting performance, provide anti-reflective properties to the dielectric layer and change the possible color space of the pigments of the invention (col. 12 Ln. 55-60).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the dielectric layers to comprise an optical stack having color shifting properties (dichroism) to enhance color shifting performance, of the pigments of the invention.
Regarding claim 5, Phillips et al. teaches all the limitations of claim 1 above, and further teaches that the first dielectric layer (124/164a; first light interference cavity) and the second dielectric layer (126/164b; second light interference cavity) can be formed of high/low dielectric optical stacks, which have alternating layers of low index and high index materials (col. 12 Ln. 33-58). Phillips et al. further teaches that the dielectric layers can each be compose of the same material or different materials, having the same or different optical or physical thicknesses (col 12 LN. 20-col. 13 Ln. 5). Phillips et al. further teaches that it will be appreciated that when the dielectric layers are composed of different materials or have different thicknesses, the plages exhibit different colors on each side thereof (col. 12 Ln. 33-65).
While the reference does not expressly teach that the first dielectric layer (124/164a; first light interference cavity) and the second dielectric layer (126/164b; second light interference cavity) comprise the same number of dielectric layers and same materials, such a modification would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention based upon the desired color viewed on either side of the resultant flake. Phillips et al. teaches that the dielectric layers can be composed of the same or different materials, and therefore, such a modification is within the level of one having ordinary skill in the art.
Regarding claim 8, Phillips et al. teaches all the limitations of claim 6 above, and further teaches that the first dielectric layer (124/164a; first light interference cavity) and a second dielectric layer (126/164b; second light interference cavity) can be arranged in high/low dielectric optical stacks, which have alternating layers of low index (L) and high index materials (H), wherein suitable stack configurations include LH, HL, LHL, HLH, HLHL, LHLH or in general (LHL)n or (HLH)n, wherein n=100 (col. 12 Ln. 33-58). Phillips et al. teaches that various high/low optical stacks can be used to enhance color shifting performance, provide anti-reflective properties to the dielectric layer, and change the possible color space of the pigments of the invention (col. 12 Ln. 33-58).
Based upon the teachings of Phillips et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize any suitable stack configuration taught by Phillips et al. based upon the desired color shifting properties and performance of the resultant magnetic flake (semi-transparent magnetic pigment), as both Phillips et al. and instant claim 8 recite similar dielectric stack configurations.
Regarding claim 10, Phillips et al. teaches all the limitations of claim 9 above, and further teaches that the first absorber layer (128; metal material) and the second absorber layer (103; metal material) can be comprised of the same or different materials and same or different thicknesses (col. 13 Ln. 45-60). While the reference does teach some overlap in the materials disclosed for the magnetic material (semi-transparent, metallic magnetic material) and the first absorber layer (128; metal material) and the second absorber layer (103; metal material) (col. 9 Ln 55-col. 10 Ln. 45, col. 13 Ln 5-60), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the materials used for the magnetic material (semi-transparent, metallic magnetic material), the first absorber layer (128; metal material) and the second absorber layer (103; metal material), such that they were all comprised of different materials based upon the desired visual/color effect of the resultant color shifting magnetic flake (semi-transparent magnetic pigment).
Regarding claim 13, Phillips et al. teaches all the limitations of claim 1 above, and further teaches, as illustrated by Figure 3, the magnetic flake (semi-transparent magnetic pigment) has a structure of: absorber (128; metal material)/first stack of dielectric layers (124)/RMF (122; semi-transparent, metallic magnetic material)/second stack of dielectric layers (126)/absorber (130; metal material). Phillips et al. further teaches that the that the first dielectric layer (124/164a; first light interference cavity) and a second dielectric layer (126/164b; second light interference cavity) can be arranged in high/low dielectric optical stacks, which have alternating layers of low index (L) and high index materials (H), wherein suitable stack configurations include LH, HL, LHL, HLH, HLHL, LHLH or in general (LHL)n or (HLH)n, wherein n=100 (col. 12 Ln. 33-58). Additionally, Phillips et al. teaches that the magnetic material (semi-transparent, metallic magnetic material) can be formed of any magnetic material such as nickel, cobalt, iron, gadolinium, terbium, dysprosium, erbium; and alloys such as Fe/Si, Fe/Ni, FeCo, Fe/Ni/Mo; hard magnetic materials such as SmCo5, NdCo5, SmCo17, Nd2Fe14B, Sr6Fe2O3, TbFe2, Al-Ni-Co; spinal ferrites such as Fe3O4, NiFe2O4, MnFe2O4, CoFe2O4; garnets such as YIG, GdIG; or soft magnetic materials (Figures 2, 3, 5; col. 9 Ln. 55-col. 10 Ln. 11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try any of the magnetic materials disclosed, including those containing cobalt, as Phillips et al. teaches cobalt is an appropriate magnetic material utilized in the magnetic flake (semi-transparent magnetic pigment).
Regarding claims 14 and 15, Phillips et al. teaches all the limitations of claim 1 above, however, the reference does not expressly teach that the magnetizable flakes (semi-transparent magnetic pigment) at a first viewing angle exhibit a first color in reflection and a second color in transmission as recited by claim 14 or that at a change of viewing angle from the first viewing angle, the magnetizable flakes (semi-transparent magnetic pigment) is configured to exhibit a gradual change from the first color to a third color in reflection and a gradual change from the third color to a fourth color in transmission, wherein the first color, the second color, the third color and the fourth color are different colors. The reference does, however, recite the same materials used in the magnetic layer (semi-transparent, metallic magnetic material) and the dielectric layer of the magnetizable flakes (semi-transparent magnetic pigment) as disclosed by the instant specification in paragraphs [0030-0035, 0039] (see Phillips et al. col. 9 Ln. 55-col. 13 Ln. 5).
The instant application also discloses that the semi-transparent magnetic pigment can have a structure as follows: (metal material/dielectric material)n/semi-transparent metallic magnetic material/ (dielectric material/metal material)n, where n is an integer greater than or equal to 1. Such a structure is illustrated by Figure 3 of Phillips et al., wherein the absorber is said to be a metallic material such as chromium aluminum, nickel, palladium, platinum, cobalt, tin (see col. 13 Ln. 5-20) which has also disclosed by the instant application as material used for the metal layer (see [0042] of pg-pub). Additionally, Phillips et al. teaches similar material used for the dielectric layers (see col. 11 Ln. 59-col. 12 Ln. 20) as the instant application in paragraph [0032-0034] of the pg-pub. Phillips et al. further teaches that the dielectric layers can each be composed of the same of different materials, have the same or different optical or physical thicknesses for each layer to exhibit different colors (col. 12 Ln. 59-col. 13 Ln. 5).
As Phillips et al. teaches a similar layer structure for the magnetizable flakes (semi-transparent magnetic pigment) and similar materials used for each layer as the instant application, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to choose materials and thicknesses of the materials to achieve the desired color effects, such as those required by claims 14 and 15 of the instant application.
Regarding claims 20 and 22, Phillips et al. teaches coated articles, such as security documents, comprising images formed by color shifting magnetic pigment compositions (col. 1 Ln. 14-18). The magnetic pigment compositions are comprised of a magnetic flake (semi-transparent magnetic pigment) comprising a central magnetic layer (102; magnetic layer) of a magnetic material (semi-transparent, metallic magnetic material) having a first side and opposing second side, wherein the magnetic material (semi-transparent, metallic magnetic material) can be formed of any magnetic material such as nickel, cobalt, iron, gadolinium, terbium, dysprosium, erbium; and alloys such as Fe/Si, Fe/Ni, FeCo, Fe/Ni/Mo; hard magnetic materials such as SmCo5, NdCo5, SmCo17, Nd2Fe14B, Sr6Fe2O3, TbFe2, Al-Ni-Co; spinal ferrites such as Fe3O4, NiFe2O4, MnFe2O4, CoFe2O4; garnets such as YIG, GdIG; or soft magnetic materials (Figures 2, 3, 5; col. 9 Ln. 55-col. 10 Ln. 11), which are the same materials disclosed by the instant application for the claimed magnetic layer (see pg-pub [0039]). Phillips et al. further teaches that, when utilized as an absorber, the magnetic material is deposited to a thickness so that it is not substantially opaque (i.e. semi-transparent)(col. 10 Ln. 9-11). Phillips et al. teaches that the magnetic flake (semi-transparent magnetic pigment) are interspersed within a pigment medium such as a resin or mixture of resins that can be dried or solidified by thermal processes like thermal crosslinking (col. 17 Ln. 10-62).
Phillips et al. further teaches, as shown by at least Figures 3 and 5, that the magnetic material (semi-transparent, metallic magnetic material) is located at the center of the magnetic flake (semi-transparent magnetic pigment), wherein a first stack of dielectric layer (124/164a; first light interference cavity) and a second stack of dielectric layer (126/164b; second light interference cavity) are present on the first side and opposing second side of the magnetic material (semi-transparent, metallic magnetic material) (Fig. 3, 5; col. 11 Ln. 10-col. 13 Ln. 5). Phillips et al. teaches that the first dielectric layer (124/164a; first light interference cavity) and the second dielectric layer (126/164b; second light interference cavity) can be formed of high/low dielectric optical stacks, which have alternating layers of low index and high index materials (col. 12 Ln. 33-58). Phillips et al. further teaches that the high refractive index material has an index of refraction greater than 1.65 and the low refractive index material has a refractive index of less than 1.65 (col. 11 Ln. 40-col. 12 Ln. 20). Phillips et al. teaches that the dielectric layers act as spacers in the thin film stack structure, and are formed to have an effective thickness for imparting interference color and desired color shifting properties (col. 11 Ln. 20-57).
Phillips et al. further teaches that the dielectric layers can each be compose of the same material or different materials, having the same or different optical or physical thicknesses (col 12 LN. 20-col. 13 Ln. 5). Phillips et al. further teaches that it will be appreciated that when the dielectric layers are composed of different materials or have different thicknesses, the plages exhibit different colors on each side thereof (col. 12 Ln. 33-65).
While the reference does not expressly teach that the first dielectric layer (124/164a; first light interference cavity) and the second dielectric layer (126/164b; second light interference cavity) comprise the same number of dielectric layers and same materials, such a modification would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention based upon the desired color viewed on either side of the resultant flake. Phillips et al. teaches that the dielectric layers can be composed of the same or different materials, and therefore, such a modification is within the level of one having ordinary skill in the art.
The limitation regarding the claimed magnetic layer reciting “configured as a convex mirror” and “in response to an applied magnetic field, aligns the semi-transparent magnetic pigment along curved lines of the applied magnetic field to produce the semi-transparent magnetic pigment as the convex mirror” recites the intended use of the claimed semi-transparent magnetic pigment. As detailed in the above rejection, Phillips et al. teaches the same structure and materials as the instant application, and therefore, would be capable of performing in the manner claimed.
Regarding claim 21, Phillips et al. teaches all the limitations of claim 20 above, and as previously stated, teaches that the magnetic material (semi-transparent, metallic magnetic material) can be formed of any magnetic material such as nickel, cobalt, iron, gadolinium, terbium, dysprosium, erbium; and alloys such as Fe/Si, Fe/Ni, FeCo, Fe/Ni/Mo; hard magnetic materials such as SmCo5, NdCo5, SmCo17, Nd2Fe14B, Sr6Fe2O3, TbFe2, Al-Ni-Co; spinal ferrites such as Fe3O4, NiFe2O4, MnFe2O4, CoFe2O4; garnets such as YIG, GdIG; or soft magnetic materials (Figures 2, 3, 5; col. 9 Ln. 55-col. 10 Ln. 11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try any of the magnetic materials disclosed, including those containing cobalt, as Phillips et al. teaches cobalt is an appropriate magnetic material utilized in the magnetic flake (semi-transparent magnetic pigment).
Regarding claim 23, Phillips et al. teaches all the limitations of claim 20 above.
The limitations reciting “configured to exhibit a first color in reflection and a second color in transmission” and “is configured to exhibit a gradual change from the first color to a third color in reflection and a gradual change from the third color to a fourth color in transmission, wherein the first color, the second color, the third color and the fourth color are different colors” recites the intended use of the claimed invention, and has been considered, but is not given patentable weight as a structural limitation of the invention. The limitation defines the structural component by what it does, rather than what it is, and is a functional limitation that was evaluated in conjunction with the remainder of claim 23.
Phillips et al. does teach the same materials used in the magnetic layer (semi-transparent, metallic magnetic material) and the dielectric layer of the magnetizable flakes (semi-transparent magnetic pigment) as disclosed by the instant specification in paragraphs [0030-0035, 0039] (see Phillips et al. col. 9 Ln. 55-col. 13 Ln. 5).
Phillips et al. teaches similar material used for the dielectric layers (see col. 11 Ln. 59-col. 12 Ln. 20) as the instant application in paragraph [0032-0034] of the pg-pub. Phillips et al. further teaches that the dielectric layers can each be composed of the same of different materials, have the same or different optical or physical thicknesses for each layer to exhibit different colors (col. 12 Ln. 59-col. 13 Ln. 5).
As Phillips et al. teaches a similar layer structure for the magnetizable flakes (semi-transparent magnetic pigment) and similar materials used for each layer as the instant application, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to choose materials and thicknesses of the materials to achieve the desired color effects, such as those required by claim 23 of the instant application.
Response to Arguments
Response-Drawings
The previous rejections to the drawings for failing to comply with 37 CFR 1.84(p)(5) by including reference number 5, 6, 7, 8 and 9 in Figure 4 that are not mentioned in the description are overcome by Applicants amendments to the drawings in the response filed 03/27/2026.
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 6 and 15 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 are overcome by Applicants amendments to the claims in the response filed 03/27/2026.
Response-Claim Rejections - 35 USC § 102 and 103
Applicant's arguments filed 03/27/2026 have been fully considered but they are not persuasive.
With respect to claim 1, the Applicant argues on page 10 that Phillips et al. does not teach the newly added limitation reciting “in response to an applied magnetic field, aligns the semi-transparent magnetic pigment along curved lines of the applied magnetic field to produce the semi-transparent magnetic pigment as a convex mirror”. The Applicant argues that Phillips et al. teaches that in response to a magnetic field, the magnetic flake is reoriented to be non-parallel to the surface of the coating product (col. 9 Ln. 13-16) but does not become convex to align along the curved lines of the magnetic field as recited by claims. This argument is not persuasive.
The limitation in question recites the intended use of the claimed invention, and as stated above, and has been considered, but is not given patentable weight as a structural limitation of the invention. The limitation defines the structural component by what it does, rather than what it is, and is a functional limitation that was evaluated in conjunction with the remainder of the claim.
Phillips et al., as stated in the above rejections, teaches a magnetic flake (semi-transparent magnetic pigment) comprising the same layer structure and materials as the instant application. While Phillips et al. teaches a partial application of a sheet magnet to produce a three dimensional like image (see Figure 12, col. 9 Ln. 1-20, col. 18 Ln. 25-60), it remains the structure of Phillips et al. is the same as independent claims 1, 10 and 20 of the instant application. Therefore, when exposed to the same conditions as the claimed invention, the magnetic flake (semi-transparent magnetic pigment) taught by Phillips et al. would be capable of performing in the manner claimed (i.e. align along the curved lines of the magnetic field). See MPEP 2112.01 (I).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785
Prosecution Insights