DETAILED ACTION
Response to Amendment
Applicant's amendment filed 11/19/2025 has been entered. Currently, claims 1-17 and 19-31 are pending, claim 18 is cancelled and claims 25-31 are withdrawn.
Please note that cancelled claims should not have any claim text presented, see 37 CFR 1.121(c).
Claim Rejections - 35 USC § 103
Claims 1-17 and 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hida et al. (4,401,721).
The Examiner is interpreting the term “colorant” with the definition provided by applicants at [0049] of their specification that says the “colorant is a colorant that is allowed to develop a color by a developer”.
The Examiner notes the product-by-process limitations of “directly laminated” in claim 1. 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, 4, 5, 12-17, 23 and 24, Hida discloses a thermosensitive recording material that may be a card to be used for long periods of time, which reads on applicants’ multilayer body, card and passport (col. 1, lines 5-8). Please note the preamble “passport” is being interpreted as a statement of intended use and does not result in a structural difference; further, the card of Hida could be used as a passport card, which would read on the intended use of a passport.
The thermosensitive recording material comprises a first thermosensitive layer 2 that has a developer, which reads on applicants’ resin layer (B), and a second thermosensitive layer 3 directly on the layer 2 and has a leuco-dye, which reads on applicants’ resin layer (A) (col. 3, lines 29-35). Given the fact that the second thermosensitive layer 3 is directly on the first thermosensitive layer 2, this reads on the structural features resultant from the product-by-process steps claimed. The first thermosensitive layer 2 may have an acidic developer, such as bisphenol A, in a solid vehicle, and the second thermosensitive layer 3 may have a leuco dye, such as crystal violet lactone, in a solid vehicle (col. 3, line 44 to col. 4, line 15). The solid vehicles are preferably the same and may be a resin, such as polyacrylic acid, which reads on applicants’ thermoplastic resin and acrylic resin (col. 4, lines 23-43). The developer and the leuco dye may each be present at 2 to 70 weight % of their respective layers (col. 4, lines 6-17). Since there is no developer in the layer 3 and no leuco dye in the layer 2, which means those layers will have 0 parts by weight of those materials and will read on claims 15 and 16; however, Hida does not specifically teach the parts by weight relative to the resin claimed.
The Examiner notes that the weight % taught in the art overlaps with the parts by weight claimed as the less than 50 or 30 parts or less by weight of colorant or developer relative to 100 parts by weight of resin is approximately less than 33% and 23% or less of colorant or developer relative to the total weight of the layer, respectively. Since the weights overlap, 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).
It would have been obvious to have made the first and second thermosensitive layers of Hida have from 2 to 23% of colorant or developer in their respective layer and made the rest of the layers the solid resin vehicle, which would be approximately 2.04 pts to 29.9 parts of developer or colorant relative to 100 parts resin for each layer. This is within the overlapping range taught in the prior art. Lastly, it would have been obvious to have made the weight percent of colorant and developer the same in their respective layers so that they could fully react with each other to product a color. This would be a 1:1 ratio that would read on claim 17.
With regard to claims 2 and 3, Hida discloses that the first and second thermosensitive layers are coated at a coatweight of 2 to 40 g/m2 (col. 4, lines 44-57). Also, it is known that a coatweight in g/m2 is approximately the same as the thickness in microns; however, they do not specifically teach the thickness claimed.
It would have been obvious to one having ordinary skill in the art to have made the thickness any amount, including more than 6 microns for each layer, such that the layer was thick enough such that when it was colored by thermal printing the image would be dark enough for the intended use while not being so thick as to waste materials.
With regard to claims 6-11, since bisphenol A and crystal violet lactone are identical to the exemplary compounds disclosed in applicants’ specification, they will intrinsically possess the pyrolysis temperature claimed; furthermore, bisphenol A has a melting point of approximately 155-160 C and crystal violet lactone has a melting point of approximately 180 C, which reads on claims 8-11.
With regard to claims 20 and 21, Hida discloses the use of their thermosensitive recording materials for a credit card (col. 1, lines 5-8). Credit cards have a standard size of approximately 8.56 cm x 5.4 cm, which would be an area of approximately 46.2 cm2 and would read on these claims.
With regard to claim 22, this is an intended use/functional limitation of the article. Intended use limitations are not dispositive of patentability. Given the fact that the article of Hida has the identical structure as claimed, it can perform the intended use/functional limitations claimed.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al. (JP 04-368881).
With regard to claim 19, Kondo et al. teach an image forming medium that reads on applicants’ multilayer body, card and passport, and having a leuco dye layer 2, which reads on applicants’ resin layer (A), an intermediate layer 3, which reads on applicants’ resin layer (C) and a developer layer 4, which reads on applicants’ resin layer (B) [0042]. The medium can be recorded upon by using a laser [0045].
The leuco dye layer 2 may comprise 3-(N-ethyl-p-toluidino)-7-methylfluoran, which is the same leuco dye used in applicants’ example 1, and the developer layer 4 may comprise bisphenol A [0014] and [0015]. The leuco dye layer and the developer layer may contain a binder, such as acrylic resins, polyesters or polyolefins [0012] and [0027]. The leuco dye and developer may be from 10 to 90 weight % of their respective layers and a polymerizable compound may be present at 20 to 60 weight % [0032]-[0034]; however, Kondo et al. do not specifically teach the parts by weight relative to the resin claimed.
The Examiner notes that the weight % taught in the art overlaps with the parts by weight claimed of less than 50 or 30 parts or less by weight of colorant or developer relative to 100 parts by weight of resin. Since the weights overlap, 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).
It would have been obvious to have made the first and second thermosensitive layers of Hida have from 20 to 56% of polymerizable compound, 10 to 18 weight % colorant or developer in their respective layer and the rest binder, i.e. 34 to 70 weight % binder, wherein 10% colorant/developer with 34 weight % binder would be approximately 29 pts to 100 parts resin. This is within the overlapping range taught in the prior art.
Response to Arguments
Applicant’s arguments, see Remarks, filed 11/19/2025, with respect to the objection to claim 1 and the rejection of claims 1-17 and 20-24 based on Kondo et al. have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 11/19/2025 have been fully considered but they are not persuasive.
Applicants argue on pages 6-7 that Hida does not teach or suggest the content of the colorant and developer in the resin layer (A) and (B) respectively.
The Examiner respectfully disagrees and notes that he proposed making 2 to 23 weight% of the layer be colorant or developer and then make the rest of the layer entirely of resin in the obviousness rejection. This weight percent of colorant or developer is entirely within the range taught in the prior art of 2 to 70 weight % of the total layer, and therefore this shows overlap with the limitations of parts by weight of colorant or developer relative to the resin (a) or (b), respectively, as claimed.
Applicants argue on page 6 of their Remarks that a surface-smoothening agent or inorganic fillers can also be in the layer, and therefore this provide evidence that the Examiner’s assertion is misleading.
The Examiner respectfully disagrees and notes that the surface-smoothening agent or inorganic fillers are not required as they can be in the layer “up to about 20%” based on total weight (col. 5, lines 48-57). The obviousness statement made it the embodiment where they are not included, and therefore the Examiner maintains that the rejection was proper and meets the limitations claimed. Additionally, if the surface-smoothening agent and inorganic fillers are contained at 20 weight % and given the obviousness rejection made the colorant or developer be 2 to 23 weight% of the layer, this means the solid resin vehicle would then be from 78 to 57 weight % of the total layer. These weight percentages of colorant, developer and solid resin vehicle continue to overlap the parts by weight of colorant or developer relative to the resin (a) or (b), respectively.
Applicants argue on page 7 of their Remarks that since Hida dissolves or disperses the solid resin vehicle in an organic solvent, this process “does not inherently lead to the claimed proportions of developer and colorant relative to the resin content”.
The Examiner respectfully disagrees and notes that Hida teaches drying the ink to form the thermosensitive layers at col. 4, lines 44-57 and one of ordinary skill would know that the organic solvent would evaporate and the other components of the ink would make up the total solid weight of the dried layer. Applicants’ assertion does not make sense chemically, and therefore the Examiner maintains that his position was proper and would render obvious the parts by weight claimed.
Applicants argue on page 7 of their Remarks that there is no reason to modify Hida to reach the content of colorant or developer relative to the resin (a) or (b), respectively, because Hida teaches away from lowering the concentration of color former and developer at col. 1, line 66 to col. 2, line 6.
The Examiner respectfully disagrees and notes that this section does not teach away from col. 4, lines 6-17, which teaches that the developer and the leuco dye may each be present at 2 to 70 weight % of their respective layers. The fact that there is overlap of the weight percentages of colorant, developer and the solid resin vehicle with the content of colorant or developer relative to the resin (a) or (b), respectively, provides a prima facie case of obviousness.
Applicants argue on page 7 of their Remarks that since the limitations of claim 18 has been incorporated into claim 1, this fully removes the Kondo et al. rejection.
While the Examiner agrees that this has overcome the rejection of claim 1 based on Kondo et al., the rejection of claim 19 over Kondo et al. remains. Claim 19 does not require direct lamination and Applicants have not specifically pointed out how Kondo et al. does not render obvious claim 19. This means that the Examiner maintains his position was correct and has repeated it in this Office action.
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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/Gerard Higgins/Primary Examiner, Art Unit 1785