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 .
Election/Restrictions
Newly submitted claims 21-36 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The original claims were directed to a method of manufacturing a light field print using a printing press. Claims 21-36 are directed to a security document, which is a produced article distinct from a method of printing.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-35 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim 37 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by over Tompkin et al. (US PG Pub 2014/0300095).
For claim 37: Tompkin et al. teaches a method of manufacturing a banknote having a multi-layer light field print , the method comprising: providing a banknote substrate (see paragraph 160, security document provision being a BOPP) comprising a bi-axially oriented polypropylene polymer film (see paragraph 160, BOPP film); disposing an opaque layer (see Fig. 2, providing the layer 4 being opaque regions 5 onto the substrate) onto the banknote substrate such that an at least partially transparent window region 41, 42 (see paragraph 107, Fig. 2) remains; generating a front target pattern and a back target pattern (see paragraph 160, printing the substrate on both sides necessarily requires generating printing patterns for both sides); and printing the front target pattern and the back target pattern over the at least partially transparent window region to create the multi-layer light field print (see paragraph 160, both sides of the substrate are printed, patterns are provided in the windowed region corresponding to element 2, see paragraph 144, in the windowed opening, the image is seen, on the other side, the image is provided, per paragraph 160).
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.
Claims 38 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Tompkin et al. (US PG Pub 2014/0300095) in view of Lok et al. (US PG Pub 2013/0258477).
For claim 38: Tompkin et al. teaches all of the limitations of claim 38 except disposing the opaque layer onto the banknote substrate such that the at least partially transparent window region remains comprises disposing the opaque layer onto the banknote substrate and subsequently cutting a window into the banknote substrate to form the at least partially transparent window region. However, Lok et al. teaches disposing the opaque layer as the constituent material and cutting out the window in the bank note substrate to form the transparent window region (see paragraph 19). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the invention of Tompkin et al. by forming the window through cutting as taught by Lok et al. for the purpose of using opaque substrate which is readily available in the formation of the security document
For claim 39: Tompkin et al. teaches all of the limitations of claim 39 except disposing the opaque layer onto the banknote substrate such that the at least partially transparent window region remains comprises omitting the opaque layer over a designated region of the banknote substrate. However, Lok et al. teaches a method of forming a window area of a security document comprising omitting at least one opacifying layer in the region forming a window area (see paragraph 17). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the invention of Tompkin et al. to form the window area by omitting the opacifying area in the window region as taught by Lok et al. for the purpose of saving opacifying material.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Tompkin et al. (US PG Pub 2014/0300095) in view of Akita et al. (US PG Pub 2005/0013621).
For claim 40: Tompkin et al. teaches all of the limitations of claim 40 except that the front target pattern and the back target pattern comprise high-frequency spatial frequency components that together produce both high-frequency spatial variations outside a visual acuity of a human eye and low-frequency spatial frequency variations within the visual acuity of the human eye. However, Akita et al. teaches providing both high-frequency spatial variations outside a visual acuity of a human eye (see paragraph 84, dot pattern indicating of information which is not readily recognizable by the human eye) and low-frequency spatial frequency variations within the visual acuity of the human eye (see paragraph 84, color image). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the invention of Tompkin et al. by utilizing both high frequency and low frequency images as taught by Akita et al. in the security document for the purpose of reducing counterfeiting potential.
Response to Arguments
Applicants’ arguments filed on July 27, 2026 have been fully considered but they are not persuasive. Applicant has amended the claims in their entirety and new grounds of rejection appears above.
Conclusion
Applicants’ 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 DAVID H BANH whose telephone number is (571)270-3851. The examiner can normally be reached M-F 12-8PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier can be reached at (571)272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID H BANH/ Primary Examiner, Art Unit 2853
