DETAILED ACTION
Response to Amendment
Applicant's amendment filed 10/14/2025 has been entered. Currently, claims 2-6, 8-15, 17 and 18 are pending and claims 1, 7 and 16 are cancelled.
Claim Objections
Claim 17 is objected to because of the following informalities:
In claim 17 on line 6-7, the phrase “a non-phenolic colour developer, at least one colour former” is objected to grammatically. This objection can be overcome by changing this phrase to “a non-phenolic colour developer and at least one colour former” which is how the claim will be interpreted.
In claim 17 on line 13, 16 and 19, the phrases “c)”, “d)” and “e)” are objected to grammatically. This objection can be overcome by changing this phrase to “a)”, “b)” and “c)” which is how the claim will be interpreted.
In claim 17 on line 19, the phrase “a quantity of an area-based colour developer” is objected to grammatically. This objection can be overcome by changing this phrase to “an area-based colour developer quantity” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 2-6, 8-15, 17 and 18 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.
In claim 17 on lines 7-10, the limitations “and an adhesive layer and applying a back-coat to a face of the carrier substrate facing away from the heat-sensitive colour forming layer, wherein the back-coat comprises a coating to allow rear face printing using conventional printing methods” renders the claim indefinite for multiple reasons. First, the claim also requires one of the image density, relative print contrast and area-based colour developer quantity, which all require storage according to the defined “migration test”, and the migration test on page 9 of the specification requires an adhesive layer to be present. Second, it is unclear where the adhesive layer is located if not in the back-coat layer. Lastly, if there is a conventional printing layer as a back-coat, it is unclear how there can be an adhesive layer.
The rejection can be overcome by changing the phrase to “, and applying a back-coat to a face of the carrier substrate facing away from the heat-sensitive colour forming layer, wherein the back-coat comprises an adhesive layer” which is how the claim will be interpreted.
Claim Rejections - 35 USC § 103
Claims 2-6, 8-15, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor et al. (US 2005/0221982) in view of Jagiello et al. (US 2017/0368859).
With regard to claims 17, 2, 3, 15 and 18, Taylor et al. disclose forming a heat sensitive recording material by applying a heat sensitive recording layer composition to a support [0043]. The heat sensitive recording layer can comprise the same crystal form of the N-(p-toluenesulphonyl)-N’-(3-p-toluenesulphonyl-oxy-phenyl)urea as claimed by applicants [0005] and the color former is preferentially a fluoran [0019]. Please note that applicants acknowledge at page 6-7 of their specification that Taylor et al. teach the same crystal form as claimed. The support may be paper and there may be an adhesive layer applied to the rear side of the support, which reads on applicants’ back-coat and adhesive layer [0044] and [0067]; however, they do not specifically teach the materials of the adhesive layer.
Jagiello et al. teach that it is known to use a polyacrylic resin adhesive for the adhesive layer in a heat-sensitive recording material, which reads on applicants’ pressure-sensitive adhesive comprising an acrylate [0146].
Since Taylor et al. and Jagiello et al. are both drawn to adhesives for heat-sensitive recording materials, it would have been obvious to one having ordinary skill in the art to have substituted the adhesive of Taylor et al. with the known adhesive of Jagiello et al. The results of such a substitution would have been predictable to one having ordinary skill.
Given the fact that the prior art teaches the method steps and materials claimed, the prior art method will intrinsically have an image density, a relative print contrast and/or an area-based colour developer quantity when comparing a heat-sensitive recording material that has undergone the migration test defined in the specification vis-à-vis a heat-sensitive recording material that has not undergone the migration test as claimed in claims 17 and 18. Also, claim 18 does not require using a heat-activatable adhesive but rather defines what the heat-activatable adhesive is when it is used. Since Taylor et al. in view of Jagiello et al. teach an acrylic pressure-sensitive adhesive, this reads on claim 18 as well.
With regard to claim 4, an undercoat layer may be present, which reads on applicants’ intermediate layer [0056]. The undercoat layer may comprise calcined clay, which is a calcined kaolin [0057].
With regard to claims 5 and 6, Taylor et al. do not specifically teach the amount of color former and color developer in the heat-sensitive color-forming layer as claimed.
It would have been obvious to one having ordinary skill to have made the color former and color developer be any amount, including the respective ranges of 5 to 30 weight% and 3 to 35 weight% as claimed, such that there would be enough color former and color developer to develop a color while not being so large as to waste materials/money.
With regard to claims 8-14, given the fact that the prior art teaches a heat-sensitive recording material manufactured with the identical materials as claimed, it will intrinsically possess the image density, the relative print contrast and the area-based colour developer quantity as claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 10/14/2025, with respect to the previous claim objections and 112(b) rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicants argue on pages 7-8 that Taylor et al. do not teach or suggest the unexpected results to the chemical resistance and long-term storage properties of claim 17. They argue that the broader scope of properties of claim 17 can be “derived from the tables” of the specification or when considering mixtures of the alpha and beta forms of the color former.
The Examiner respectfully disagrees and notes that applicants’ specification does not have any examples of mixtures of alpha or beta forms of the color former, and therefore while there might be mixtures, there are no examples of such mixtures in the specification with the requisite data. Also deriving properties from the tables of applicants’ specification does not constitute evidence of unexpected results as this is not evidence; furthermore, it is not necessarily the case that mixing the alpha and beta forms would result in a prorated values for the properties claimed. The evidence that has been presented is for the beta form only with the three specific adhesive of the Tables. Therefore claims 17 and 18 are still not commensurate in scope with the examples for the following reasons:
Only three adhesives were used in the example and the breadth of the classes of compounds in claim 16 are much broader than these. For example, S2200 and Technomelt PS 8746 are both referred to as a “permanent hotmelt adhesive” on page 22 of the specification, but the claim refers to “heat-activatable adhesives”. Not all heat-activatable adhesives are hot-melts,
the image density % in the examples is from 53-59% and not “35% to 59%” as claimed,
the relative print contrast % is from 85-89% and not “70% to 89%” as claimed, and
the area-based colour developer quantity % is from 31-42% and not “30% to 42%” as claimed.
No pressure-sensitive rubber adhesive was tested.
Applicants do not have evidence over the entire claimed range to show unexpected results. Specifically, there is no evidence of secondary considerations for all of the adhesive compositions encompassed by the claim, the image density of from 35% to 53%, a relative print contrast of from 70% to 85% or an area-based colour developer quantity of from 30% to 31%.
Further, applicants are required to explain their results, please see MPEP 716.02(b). Page 22 of the specification call R5000N adhesive a “removable acrylate-based adhesive”, but it is unclear if this means it is a pressure-sensitive adhesive.
Applicants argue on page 8 that the “influence of the different adhesives on the measured properties is not significant”.
The Examiner respectfully disagrees and notes that image density varies from 53 to 59% based on the adhesive, which is a 10% relative difference between the two examples, which is significant. Also, the difference of area-based color developer quantity varies from 31 to 42%, which is a ~20% relative difference. This means the adhesive is important, will affect the properties and the claims will need to be commensurate in scope with the exemplary adhesives that were tested in order to show unexpected results.
Conclusion
Applicant's 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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm (variable one work-at-home day).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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