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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/21/2026 has been entered.
Response to Amendment
Applicant's amendment filed 1/21/2026 has been entered. Currently, claims 1-10 are pending, claims 5-8 are withdrawn and claims 9 and 10 are new.
Claim Rejections - 35 USC § 112
Claims 1-4, 9 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, the Examiner does not find support for the limitations of “a coating liquid comprising…0.5 wt% or more and 20 wt% or less inorganic filler particles” in the specification as originally filed. The disclosure of [0038] needs to be read in context with the rest of the specification, including [0011], [0015] and [0154], which show that the amount of filler particles in the masking layer is “relative to the resin” and not a weight percent contained in a coating liquid.
Claim Rejections - 35 USC § 103
Claims 1-4, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Oshima et al. (JP 2002-254839), machine translation included.
The Examiner notes the product-by-process limitations that the masking layer is formed from a coating liquid having the composition claimed. The solvent will not be present in the masking layer of the final product. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With regard to claims 1 and 4, Oshima et al. teach a thermal transfer sheet according to Figure 3 [0021]. The limitations in claim 1 about the use of the transfer sheet “for indirect transfer printing for forming an image” are intended use limitations that are not dispositive of patentability.
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The thermal transfer sheet comprises yellow, magenta and cyan thermal transfer dye layers 8 and a masking layer 5 arranged in sequential order on the substrate [0021]. The masking layer 5 comprises a non-transfer layer 3 on a base film 2, which reads on applicants’ masking layer on a substrate [0012]. The non-transfer layer may comprise a cellulose or polysulfone resin, which is one of the materials taught by applicants in their specification at [0041] as a binder resin having the Tg claimed, and a silica filler in an amount of from 0.01 to 200% by weight based on the binder resin [0014] and [0015]. In example 1, the masking layer composition is formed from a coating liquid that has methyl ethyl ketone and toluene, which read on applicants’ solvent, an acrylic resin binder and filler particles [0037]; however, Oshima et al. do not specifically teach the amount of filler in the coating liquid or a resultant masking layer having the same structure as that resulting from the product-by-process limitations claimed.
The Examiner notes that the relative amount of silica filler versus binder resin in the coating liquid of the prior art would overlap with the composition of the coating liquid for forming the masking layer claimed. It would have been obvious to one having ordinary skill in the art to have made the resin binder be a cellulose or polysulfone resin, the filler be a silica filler and to have made the filler be from 1% to 50% relative to the binder resin as this is within the range taught in the prior art. In the exemplary coating liquid of [0037], this would result in the composition of the coating liquid having approximately 0.5 wt% (= 0.5/100.5) to 20 wt% (= 25/125) silica filler.
With regard to claim 2, Oshima et al. do not specifically teach the diameter of the filler particles claimed.
It would have been obvious to one having ordinary skill in the art to have made the diameter of the filler particles any amount, including from 0.1 to 5 microns, depending on the desired level of protection in masking for the article being printed. One of ordinary skill would have made the particles big enough to provide the desired roughness to the masking layer, while not being so big as to protrude too much from the layer.
With regard to claim 3, the non-transfer layer can be coated to a thickness of 0.05 to 5 g/m2 [0016]. Also, it is known to one having ordinary skill that coat weight amounts are approximately the same as thickness in microns; however, Oshima et al. do not specifically teach the thickness claimed.
It would have been obvious to one having ordinary skill in the art to have made the non-transfer layer 3 any thickness, including from 0.1 to 3 microns depending on the desired end use of the user and the desired level of protection in masking for the article being printed. One of ordinary skill would have made the non-transfer layer thicker to provide extra masking protection while not so thick as to waste materials.
With regard to claims 9 and 10, Oshima et al. teach cellulose resins for the non-transfer layer [0014]. They also teach examples of cellulose-based resins can be cellulose acetate at [0019]; however, they do not specifically teach that the cellulose resin of the non-transfer layer is cellulose acetate.
It would have been obvious to one having ordinary skill in the art to have used any of the cellulose-based resins of [0019], including cellulose acetate, as the cellulose resin of the non-transfer layer. The results of such a substitution would have been predictable to one having ordinary skill as this is a recognized type of cellulose resin and it would have been obvious to have used the same material for various layers to save money.
Response to Arguments
Applicant’s arguments, see Remarks, filed 1/21/2026, with respect to the 112(b) rejection and the rejections based on Meier have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive.
Applicants argue on pages 5 to 6 of their Remarks that the rejection based on Oshima is overcome as the Examples in Table 1 demonstrate unexpected results.
The Examiner respectfully disagrees and notes that the evidence in the specification is not persuasive for various reasons.
First, applicants’ claim 1 is not commensurate in scope with the results of Table 1. Specifically, the examples in the table are formed using silicone filler and three specific resins, but applicants’ claim 1 is drawn to an inorganic filler and does not recite any of the specific resins of Table 1. This means Table 1 cannot demonstrate unexpected results for claim 1 as silicone is not inorganic.
Second, applicants have the burden of explaining the proffered data. See MPEP 716.02. Applicants need to explain whether the data in Table 1 of “weight percentage of the filler” in the masking layer is “relative to the resin” as was suggested in the original claims and at [0011], [0015] and [0154] of the specification as originally filed, or if it has some other meaning. It does not make sense that the specification is talking about the weight percentage of filler in the masking layer for the entire specification, but then at Table 1 switches to weight percentage of filler in the coating liquid. As an illustration, given the information in Table 1 and [0116], Example 2 would have 20 parts of filler, 10 parts of resin and solvent to add up to 100 parts total in the coating liquid. This example would fall outside of “0.5 wt% or more and 20 wt% or less filler particles relative to the resin” or relative to the total weight of the masking layer. Applicants have the burden of explaining this data and telling the Examiner what the composition of the coating liquid of Examples 2, 6 and 7 are since there is no explanation as to how the levels of resin, filler and solvent are adjusted to make these other coating liquids.
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.
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/Gerard Higgins/Primary Examiner, Art Unit 1785