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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/1/2025 has been entered.
Response to Amendment
Applicant's amendment filed 12/01/2025 has been entered. Currently, claims 1-3 and 6-18 are pending, claims 4 and 5 are cancelled and claims 6-14 are withdrawn.
Election/Restrictions
Applicant's amendment has overcome the rejection of claim 18 based on Fujita (7,794,631) because the specification shows unexpected results for the specific materials of claim 18 in the weight ratios claimed in claim 1 as it applies to the elected species of a compound of formula (IIa) and L as a single bond.
The Examiner has rejoined the embodiment of a compound of formula (IIb). Claims 6-14 remain withdrawn.
Claim Rejections - 35 USC § 103
Claims 1-3 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita (7,794,631).
With regard to claims 1-3 and 15-17, Fujita teaches a reversible thermochromic composition that includes an electron donative coloring organic compound (A), which reads on applicants’ compound (a), an electron accepting compound (B), which reads on applicants’ compound (b), and an ester compound (C), which reads on applicants’ reaction medium (c) (col. 1, lines 9-20 and col. 2, lines 1-5). The compound (B) can be of a type having three benzene rings, such as 4,4',4”-ethylidenetrisbisphenol which reads on applicants’ Formula (I) of claims 3 and 15-16, or a compound with two benzene rings such as 1,1-bis(4'-hydroxyphenyl)-2-methylpropane or 1,1-bis(4'-hydroxyphenyl)-3-methylbutane, which teach a branched alkyl group attached to the same central carbon atom (col. 5, lines 20-43 and col. 6, line 4); however, Fujita does not specifically teach a composition having a mixture of multiple electron accepting compounds or a branched alkyl group having 5 to 9 carbon atoms attached to the central carbon atom.
The Examiner also notes that besides 1,1-bis(4'-hydroxyphenyl)-2-methylpropane or 1,1-bis(4'-hydroxyphenyl)-3-methylbutane, Fujita teaches a compound where 6 or 7 carbon atoms may be attached to the central carbon atom in the molecule of 1,1-bis (4'-hydroxyphenyl)-n-heptane or 1,1-bis (4'-hydroxyphenyl)-n-octane (col. 5, lines 20-38).
Based on the close structural similarity of the compounds of the prior art and the range of compounds claimed, a prima facie case of obviousness exists. Please see MPEP 2144.09. There is a presumed expectation that homologs that differ by the successive addition of CH2 groups are sufficiently close structural similarity as they would have the same properties. It would have been obvious to one having ordinary skill in the art to have made the compounds above have a 3-methylpentane or 2-methylpentane group as there would be a reasonable expectation that these compounds would possess similar properties.
Additionally, it would have been obvious to have made the n-octane group one its isomers, i.e. 2-ethylhexane given that branched alkyl substituents with the substituent at the 2-position are taught in the reference.
It would have been obvious to one having ordinary skill in the art to have combined multiple developers in order to make a reversible thermochromic composition. The results of such a combination would have been predictable to one having ordinary skill; further, each of the elements would have performed the same in combination as they had separately.
It has been held that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” Please see MPEP 2144.06 and In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Lastly, it would have been obvious to one having ordinary skill in the art to have combined the two developers in any mass ratio, including from 1:1 to 1:2, to find the best sensitivity and sharp coloration ability absent unexpected results (col. 5, lines 39-43).
Claims 1-3 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita (7,794,631) in view of Fujita et al. (WO 2019/082722) of which US 2020/0325351 is the US national stage and will be used as a translation.
With regard to claims 1-3 and 15-17, Fujita ‘631 teaches a reversible thermochromic composition that includes an electron donative coloring organic compound (A), which reads on applicants’ compound (a), an electron accepting compound (B), which reads on applicants’ compound (b), and an ester compound (C), which reads on applicants’ reaction medium (c) (col. 1, lines 9-20 and col. 2, lines 1-5). The compound (B) can be of a type having three benzene rings, such as 4,4',4”-ethylidenetrisbisphenol which reads on applicants’ Formula (I) of claims 3 and 15-16, or a compound with two benzene rings such as 1,1-bis(4'-hydroxyphenyl)-2-methylpropane or 1,1-bis(4'-hydroxyphenyl)-3-methylbutane, which teach a branched alkyl group attached to the same central carbon atom (col. 5, lines 20-43 and col. 6, line 4); however, Fujita ‘631 does not specifically teach a composition having a mixture of multiple electron accepting compounds or a branched alkyl group having 5 to 9 carbon atoms attached to the central carbon atom.
It would have been obvious to one having ordinary skill in the art to have combined multiple developers in order to make a reversible thermochromic composition. The results of such a combination would have been predictable to one having ordinary skill; further, each of the elements would have performed the same in combination as they had separately.
It has been held that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” Please see MPEP 2144.06 and In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Fujita et al. ‘722 teach reversible thermochromic ink compositions that have an electron-donating color developing compound, an electron-accepting compound and a reaction medium [0032]. The electron-accepting compound overlaps with the those of Fujita ‘631 and includes 1,1-bis(4'-hydroxyphenyl)-2-methylpropane, 1,1-bis(4'-hydroxyphenyl)-3-methylbutane and 1,1-bis(4'-hydroxyphenyl)-2-ethylhexane [0100].
Since both prior art references are drawn to reversible thermochromic inks, it would have been obvious to one having ordinary skill in the art to have used the known equivalent 1,1-bis(4'-hydroxyphenyl)-2-ethylhexane taught in Fujita et al. ‘722 in place of 1,1-bis(4'-hydroxyphenyl)-2-methylpropane or 1,1-bis(4'-hydroxyphenyl)-3-methylbutane of Fujita ‘631. These are recognized equivalents in the prior art and there would have been predictable results in the substitution.
Lastly, it would have been obvious to one having ordinary skill in the art to have combined the two developers in any mass ratio, including from 1:1 to 1:2, to find the best sensitivity and sharp coloration ability absent unexpected results (col. 5, lines 39-43).
Claims 1, 3 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Oshiro (JP 2010-126549) as evidenced by “UV-531” (https://hunan-chem.com/wp-content/uploads/2016/06/UV-Absorber-531.pdf).
With regard to claims 1 and 16, Oshiro teaches the reversible thermochromic composition of examples 16 and 18 of Table 5 using a fluoran color former, which reads on applicants’ compound (a), a developer including 1,1-bis(4-hydroxyphenyl)-1-phenylethane, which reads on applicants’ Formula (I) of compound (b) and the third compound in claims 16 and 18, and methyl stearate as a desensitizer, which reads on applicants’ reaction medium (c) [0017], [0019], [0028], [0032], [0039] and [0072]. The composition may also contain an ultraviolet absorber that may be Cyasorb UV351 [0042]-[0043]. As evidenced by “UV-531”, this compound is 2-hydroxy-4-(octyloxy)benzophenone, which reads on applicants’ compound (IIb); however, Oshiro does not teach a specific example with UV-531.
It would have been obvious to one having ordinary skill in the art to have combined in the UV-531 UV absorber taught in Oshiro into their exemplary compositions in order for the purpose of preventing degradation of the color former [0042]. The UV-531 compound will intrinsically behave as an electron-accepting compound in the composition.
Lastly, with regard to the limitations of the mass ratio of formula (I) to Formula (IIa) in claim 1, these limitations do not explicitly require the composition to comprise the compound according to formula (IIa). Rather, it is defining what the specific mass ratio may be when the compound (IIa) is used. Given that Oshiro meets the embodiment of using a compound according to (IIb), this means it meets this claim.
With regard to claim 3, this claim is not specifically requiring the presence of the substituent R14. Rather, it is defining what R14 may be when the substituent is present. Given that Oshiro meets the embodiment of using a compound according to formula (I) where n14 is 0, this means it meets this claim as well.
With regard to claims 17 and 18, these claims are not specifically requiring the presence of the compound according to formula (IIa). Rather, they are defining what (IIa) may be when the compound is present. Given that Oshiro meets the embodiment of using a compound according to (IIb), this means it meets these claims as well.
Claims 1-3, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (5,879,438).
With regard to claims 1-3, 15 and 17, Fujita et al. teach a reversible thermochromic composition that may comprise an electron donating compound (a), an electron accepting compound (b), a metachromic temperature adjuster (c) that reads on applicants’ reaction medium (c), a light-fastness providing agent (d) that may read on applicants’ formula (IIa) and a light stabilizer (e) that reads on applicants’ formula (IIb) (col. 2, lines 24-48). The electron accepting compound (b) that may be 4,4’,4”-methylidenetrisphenol, which reads on applicants’ formula (I) with L as a single bond, the light-fastness providing agent (d) may be 1,1-Bis(4-hydroxyphenyl)-n-hexane or 1,1-bis(4-hydroxyphenyl)-2-ethylhexane and the light stabilizer (e) may be 2-hydroxy-4-methoxybenzophenone (col. 8, lines 15-54, col. 15, lines 1-15 and col. 16, lines 5-15); however, Fujita et al. do not specifically teach a composition having a combination of these materials.
It would have been obvious to one having ordinary skill in the art to have made a combination of either 4,4’,4”-methylidenetrisphenol with 1,1-Bis(4-hydroxyphenyl)-n-hexane and 2-hydroxy-4-methoxybenzophenone, or a combination of 4,4’,4”-methylidenetrisphenol with 1,1-bis(4-hydroxyphenyl)-2-ethylhexane and 2-hydroxy-4-methoxybenzophenone as these materials are taught in the prior art as being proper for the electron accepting compound (b), the light-fastness providing agent (d) and the light stabilizer (e). There would be a reasonable expectation of success in forming a working reversible thermochromic composition as these materials are all taught for that purpose.
With regard to the limitations of the mass ratio of formula (I) to Formula (IIa) in claim 1, these limitations do not explicitly require the composition to comprise the compound according to formula (IIa). Rather, it is defining what the specific mass ratio may be when the compound (IIa) is used. Given that the embodiment of 4,4’,4”-methylidenetrisphenol with 1,1-Bis(4-hydroxyphenyl)-n-hexane and 2-hydroxy-4-methoxybenzophenone teaches the compound according to (IIb), this means it meets the claim.
Alternatively, Fujita et al. teach in Examples 2 and 4 of Table 6 that the components (b) and (d) may be present at 6:6 and 3:5 parts by weight relative to each other, i.e. (b):(d); however, they do not specifically teach the parts by weight of 4,4’,4”-methylidenetrisphenol and 1,1-bis(4-hydroxyphenyl)-2-ethylhexane.
It would have been obvious to one having ordinary skill in the art to have made the thermochromic composition have component (b), i.e. 4,4’,4”-methylidenetrisphenol, and component (d), i.e. 1,1-bis(4-hydroxyphenyl)-2-ethylhexane, present at the same parts by weight as is taught in Examples 2 or 4 of Table 6 as is this is considered acceptable weight parts by Fujita et al. These parts by weight would read on the mass ratio of claim 1.
Response to Arguments
Applicant’s arguments, see Remarks, filed 11/19/2025, with respect to the rejection of claim 18 based on Fujita (7,794,631) have been fully considered and are persuasive.
Applicants’ specification demonstrates unexpected results for the combination of the specific compounds according to formula (I) and formula (IIa) of claim 18 with the mass ratio of claim 1 that has overcome Fujita (7,794,631) and Fujita (7,794,631) in view of Fujita et al. (WO 2019/082722).
Applicant's arguments filed 11/19/2025 have been fully considered but they are not persuasive.
Applicants argue that claims 1 and 18 should be allowed as there are unexpected results for the claimed invention.
The Examiner respectfully disagrees and notes that claim 1 is not commensurate in scope with the evidence provided. At least from the Tables 1 and 2, the ratio of from 1:1 to 1:2 was tested for only four compounds according to each of (I) and (IIa). Of these, only one of the compounds according to (IIa) reads on the claim 1 limitations of “one of Ra1 and Ra2 is a branched alkyl group having 5 to 9 carbon atoms”. This one compound cannot support unexpected results for the broader range of compounds of claim 1.
Similarly, three of the four compounds according to formula (I) that were tested read on the claim 1 limitations. These three compounds cannot support unexpected results for the broader range of compounds of claim 1. For all of these reasons, the Examiner maintains that the rejection of claim 1 based upon Fujita (7,794,631) alone or in view of Fujita et al. (WO 2019/082722) is proper and has been repeated above.
With regard to claim applicants’ arguments concerning unexpected results of claim 18, the Examiner notes that he has found applicants’ response persuasive insofar as it affects Fujita (7,794,631) and Fujita et al. (WO 2019/082722). This means the Examiner has rejoined the embodiment of a compound of formula (IIb).
The Examiner notes that applicants’ claims 1 and 18 do not require the use of the compound according to formula (IIa). Rather, the claims are defining what (IIa) may be, or the mass ratio of (IIa), when the compound is present. The Examiner has now added rejections based on Oshiro and Fujita et al. (5,879,438) that meet the embodiment of using a compound according to (IIb). Given that Oshiro meets the embodiment of using a compound according to (IIb) and it teaches the specific compounds that read on applicants’ formula (I), this means it meets these claims as well.
Conclusion
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/Gerard Higgins/Primary Examiner, Art Unit 1785