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 .
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.
Claim 25 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.
Regarding claim 25, the phrase “can be” renders the claim indefinite. Alternative phrasing, such as “is activated” or “is activatable” would overcome this rejection.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 19-22 and 26 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claims 19-22 and 26, claim 18 is directed to a card-form data carrier. Recitations regarding a laser used in coloring the data carrier do not further limit the data carrier itself.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 18-22, 24, 26, 27, 29, 30, and 32-33 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tziovaras et al. (2019/0106837).
Tziovaras discloses a card-form data carrier which comprises at least one film (paragraph 0074) having a first surface and an opposite second surface, wherein the film is produced by an extrusion process (paragraph 0074), wherein at least partially laser-activatable pigments are integrated in the film (paragraph 0076), wherein the pigments are configured in such a way that they can be activated by at least one laser, wherein an irreversible color change of the film can be generated (paragraph 0106).
Regarding claim 19, Tziovaras discloses only one laser.
Regarding claim 20, see paragraph 0107.
Regarding claim 21, see paragraph 0107.
Regarding claim 22, see paragraph 0108.
Regarding claims 27 and 33, see paragraph 0021.
Regarding claim 30, any part of the film can be irradiated and have its color changed.
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.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Tziovaras et al. (2019/0106837) in view of Takeda et al. (2019/0255874).
Tziovaras discloses the invention substantially as claimed, as set forth above. However, Tziovaras does not disclose metal or metal oxide as part of the pigmentation. Takeda teaches using metal oxide as a laser-activatable pigment (paragraph 0055). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use metal oxide as a laser-activatable pigment in the card disclosed by Tziovaras, as taught by Takeda, as a matter of design choice.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Tziovaras et al. (2019/0106837).
Tziovaras discloses the invention substantially as claimed, as set forth above. However, it is not known what size the pigments are. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the pigments at least 1 µm and at most 60 µm, because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP § 2144.05(II)(A).
Claims 31 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Tziovaras et al. (2019/0106837) in view of Rack et al. (2021/0276359).
Tziovaras discloses the invention substantially as claimed, as set forth above. However, Tziovaras does not disclose a light-refracting structure. Rack teaches providing such a structure in order to create a lenticular image. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a lens structure to the card disclosed by Tziovaras, as taught by Rack, in order to create a lenticular image.
Allowable Subject Matter
Claim 25 would be allowable if rewritten to overcome the rejection(s) 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.
The prior art of record does not disclose or suggest a laser-activatable pigment that is activatable at a temperature greater than an extrusion temperature of the film.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The relevance of each reference is explained below, unless the relevance is deemed to be readily apparent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GARY C HOGE whose telephone number is (571)272-6645. The examiner can normally be reached Monday through Friday.
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, Jonathan Liu can be reached at (571) 272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GARY C HOGE/ Primary Examiner, Art Unit 3631
