DETAILED ACTION
Response to Amendment
Applicant's amendment filed 7/13/2026 has been entered. Currently, claims 1-11 are pending, claims 5-8 are withdrawn and claims 11 is new.
Claim Rejections - 35 USC § 112
Claim 10 is 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 10, the claim seeks to state that the “inorganic filler particles are silicone filler particles”, but this renders the claim indefinite as silicone is not an inorganic material. For purposes of examination, either a silicone particle or an inorganic particle will read on claim 1.
Claim 10 is 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.
In claim 10, the claim seeks to state that the inorganic particles of claim 1 “are silicone filler particles”, but this fails to limit the claim from which it depends as silicone is not an inorganic material.
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 § 103
Claims 1-4 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Oshima et al. (JP 2002-254839), machine translation included.
With regard to claims 1, 4 and 11, Oshima et al. teach a thermal transfer sheet according to Figure 3 [0021]. The limitations in claims 1 and 11 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, wherein the non-transfer layer 3 reads on applicants’ masking layer directly on a substrate, see Figure 1 and [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 or silicone filler, which reads on applicants’ inorganic or silicone filler, in an amount of from 0.01 to 200% by weight based on the binder resin, which overlaps with the weight percentages of claims 1 and 11 [0014] and [0015]; however, Oshima et al. do not specifically teach the amount of filler claimed.
Since the weight percent range of filler in the prior art overlaps with the amount of filler claimed, a prima facie case of obviousness exists. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claims 2 and 11, 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 claims 3 and 11, 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 0.3 to 1 or 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 9-11, 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.
With regard to claim 11, the silicone filler amount, binder resin, masking layer thickness, and particle diameter have all been rendered obvious above for the reasons noted above. The cellulose acetate rendered obvious above will intrinsically have the Tg claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 7/13/2026, with respect to the 112(a) rejection has been fully considered and are persuasive. The relevant rejection has been withdrawn.
Please note that applicants’ specification amendment has been entered. Since the issue in the specification has been rectified, the issues that led to the 112(b) set forth in the Office action mailed 3/13/2026 has also been overcome. The amendment has been entered as it follows the same fact pattern as In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971). The error in the specification was manifest to one skilled in the art as there was a contradiction between the weight percentage of filler particle relative to the resin of the masking layer at [0011] and Table 1 when compared with [0111]-[0115]. Applicants 132 Declaration filed 7/13/2026 in combination with the evidence at [0011] and Table 1 provide sufficient evidence for the amendment to [0114] and [0115] to correct this error. The correction is not radical in nature and does not depart from the invention originally disclosed.
Applicant's arguments filed 7/13/2026 have been fully considered but they are not persuasive.
Applicants argue on page 7 that the masking layer is not “directly on a substrate” as claimed.
The Examiner respectfully disagrees and notes that in Figure 1 the non-transfer layer 3 is directly on the substrate film 2.
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 argument of unexpected results 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 can include an inorganic filler. This means Table 1 cannot demonstrate unexpected results for the entire scope of claim 1 as silicone is not inorganic.
Second, applicants’ claim 11 is not commensurate in scope with the results of Table 1 because the Tg of the examples are from 142 C to 220 C, and this would not provide sufficient evidence over the entirety of the claimed range from 140 to 220 C. The Tg of the resin will have an effect on how the sticking, burrs in void area and rub-off are observed after transfer from an intermediate transfer medium to a transfer target.
Lastly as to both claims 1 and 11, the experimental results of sticking, burrs in void area and rub-off are all measured after transfer using the intermediate transfer medium and not the thermal transfer sheet currently claimed. The claims are therefore not commensurate in scope with the evidence provided as the sticking, burrs in void area and rub-off will all be affected by how the masking layer 3 sticks to the image receiving layer 9 and the image 6a compared to the transfer target 10; further, the substrate of the thermal transfer sheet is no longer present (see applicants’ Figure 3D).
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.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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