DETAILED ACTION
Title
The title of the invention is not descriptive. The title “color lock” appears to be a mistranslation. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the Specification, while being enabling for at least one structural arrangement that effectuates that functional recitation “and the second personalization element is configured to exhibit…” (independent claims 1 and 11), does not reasonably provide enablement for all structures which would provide such a functionality. The specification does not enable any person skilled in the art to which it pertains, or with which it is nearly connected, to reproduce the invention commensurate in scope with these claims.
Claim language is non-enabled when it "merely described a particular end result [visual appearance at different angles], did not set forth any specific structure [second personalization partial element has no claimed structure, whatsoever], and would encompass any and all structures for achieving that result, including those which were not what the applicant had invented." Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946); see also Ex Parte Miyazaki, BPAI 2007-3300. In the instant case, the claiming of two different images in two separate scenarios, absent any structure for the second personalization partial element, is non-enabled since structures not defined in the Specification could provide such a functionality.
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.
In respect to claims 1-2, 8, 11, and 13, the terms “preferably” and “such as” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
In respect to claim 8, the claim is additionally unclear. The claim recites “wherein the second personalization element provides at least one of the CMYK color components” which is unclear. As is readily known, CMYK color components are specific ink formations. The second personalization element is a metal or other color changing device (see independent claim); thus, it is unclear how a non-ink color-changing device provides for a standard CMYK color component.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wu et al. (US 2022/0281258).
In respect to claim 1, Wu et al. disclose a security document comprising: a document body (e.g. ID card) and at least one personalization element 402 (Fig. 4A); wherein the personalization element 402 comprises at least a first personalization partial element (print) 406 and a second personalization partial element 412. Wu et al. further discloses that the second personalization element 412 exhibits a first appearance at a first viewing angle and a second appearance at a second viewing angle (e.g. the same appearance from both viewing angles) although it is further noted that optical various inks/media may be used, which would result in a different appearance from each viewing angle (0076). Since the personalization element 402 is a composite image of both partial images, it has the same viewing functionality as detailed above (0057; Fig. 4B).
In respect to claims 2, 4-5, and 7, Wu et al. disclose that the second personalization partial element 412 is configured to be color-changed through electromagnetic radiation (laser) and forms a (positive) grayscale pattern (0057).
In respect to claims 3 and 6, Wu et al. disclose that the first personalization partial element “color component” 406 is printed with ink jet or laser printer (0010), and that the print pattern may be “irregular” i.e. it may have interspacing (Fig. 4B) or contains various amounts of irregular dots extremely well known in ink jet printing.
In respect to claim 8, although unclear for the reasons detailed in the 35 USC 112 above, Wu et al. disclose that the first personalization partial element 406 provides a color image e.g. from CYMK (0047) and the second personalization partial element 412 is a greyscale component, thus providing a “K component” type element.
In respect to claim 9, Wu et al. disclose that the first personalization partial element 406 is provided on a surface of the document body (particularly substrate 408) and the second personalization partial element 412 is laser-engraved and thus provided in a volume within the document body (particularly substrate 414) (Fig. 4B).
In respect to claim 10, Wu et al. disclose that the personalization element 402 is at least partially arranged in a transparent region (with all substrates of the document body being at least somewhat transparent) (0057). However, it may also be incorporated into a window of transparent region (0083).
In respect to claim 11-15, Wu et al. disclose the claimed invention for the reasons stated above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Endres (US 2010/0290039), Lazzari et al. (US 2014/0361527), Sailer et al. (US 2023/0166555), Walter et al. (US 2026/0249639), Springman (US 2015/0191027), Tappij-Gielen (US 2011/0037247), Jones et al. (US 10,385,514), Maurer (US 6,633,321), Wanjek et al. (DE 10-2009-037832), Muke (WO 2005/058608), and Christen et al. (WO 00/73088), disclose similar inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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 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.
/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
