DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/15/2026 has been entered.
Response to Amendment
Applicant's amendment filed 4/15/2026 has been entered. Currently, claims 2-6, 8-15, 17 and 18 are pending and claims 1, 7 and 16 are cancelled.
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 filed 3/16/2026 have been fully considered but they are not persuasive.
Applicants argue on pages 7-8 of their Remarks that the 132 Declaration filed 3/16/2026 provide further evidence that the beta form of PF201 shows unexpected results that would overcome the prior art rejection. They state in point 9 that the samples “containing the alpha form of PF201 exhibit remaining image density values…at or below the claimed threshold of 35%”.
The Examiner respectfully disagrees and notes that the new evidence of the 132 Declaration provides further evidence to state that the claims are not commensurate in scope with the evidence provided. In section 8 of the Declaration, rows 3 and 5 of the Table show that the image density of the alpha form is 35.54% and 41.46%, respectively. These values are for the 100% alpha form, i.e. comparative examples, and are within the range of claim 17, which provides evidence that the claimed range is not commensurate in scope with the evidence of unexpected results. These values would not be accurately described as “at or below the claimed threshold of 35%” or that when using only the alpha form “image densities after storage are only ≤ 33%” in points 9 and 10 of the Declaration.
Similarly, rows 1, 3, 5 and 11 of the Table show that the relative print contrast of only the alpha form is 73.81%, 72.09%, 80.39% and 78.05%, respectively. Each of these comparative examples have values within the range of claim 17, which provides evidence that the claimed range is not commensurate in scope with the evidence of unexpected results.
Applicants argue on pages 8-9 that Taylor et al. and Jagiello 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. They state at point 10 of their Declaration that the image density must be “at least in the range of > 33% to 53%” when the two forms are mixed.
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 mixtures might be within the scope of the claims, there are no examples of such mixtures with actual proof in the specification or the Declaration. Deriving properties from the tables of the specification and/or the Declaration would be opinion evidence as there is no actual proof of what the image density would be when the alpha and beta forms of PF201 were mixed.
Also, it is not necessarily the case that mixing the alpha and beta forms would result in prorated values for the properties claimed as opined in point 10 of the Declaration. It is entirely possible that the effect of the beta form could overwhelm any detrimental effect of the alpha form and the image density could still be 53% to 59% for the mixture. Without actual proof, the Examiner cannot make a determination on the hypothetical mixtures, see MPEP 716.01(c).
Additionally, the new evidence at point 8 of applicants’ Declaration shows comparative examples with only the alpha form that have an image density of 35.54% or 41.46%. These examples show that the allegation that there are unexpected results “at least in the range of > 33% to 53%” for the image density when the two forms are mixed, cannot be accurate as the comparative examples of only the alpha form are also in this range. The comparative examples provide evidence that the image density range of claim 17 does not possess unexpected results.
Lastly, the Declaration says the adhesive R5000 was used as the same adhesive system in the new data in the Declaration. Applicants do not explain their data as they do not state in the Declaration or the specification what type of adhesive this is, and therefore the Examiner does not know if this is a PSA or a hotmelt adhesive. Applicants have the burden to explain their proffered data, see MPEP 716.02(b).
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 and it is unclear if R5000 is a PSA acrylate adhesive.
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%.
Conclusion
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.
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, 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.
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.
/Gerard Higgins/Primary Examiner, Art Unit 1785
Prosecution Insights