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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/13/2026 has been entered.
Response to Amendment
Applicant's amendments filed 3/13/2026 and 3/3/2026 have been entered. Currently, claims 17, 20, 25 and 27 are pending, claims 1-16, 18, 19, 21-24 and 26 are cancelled.
Claim Rejections - 35 USC § 112
Claim 27 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 27, the limitations that “the at least two urea compounds include a combination…or a combination…or a combination” render the claim indefinite as it is unclear if this is limiting what the at least two urea compounds may be selected from, or if this is exemplary language. The rejection can be overcome by changing the claim limitations to “the at least two urea compounds are selected from the group consisting of a combination…a combination…and a combination” which is how the claim will be interpreted.
Claim Rejections - 35 USC § 103
Claims 17, 20 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Hirai et al. (WO 2021/117702) of which US 2023/002772 is the US national stage and will be used as a translation.
With regard to claims 17 and 20, Hirai et al. teach their Example 7 using thermosensitive recording layer coating solution 4, which reads applicants’ thermosensitive recording layer with a leuco dye and the first urea compound, and then applying protective layer coating solution, which reads on applicants’ protective layer [0138]-[0148], [0153], [0155], [0160]-[0161] and [0180]-[0182]. The urea developer is present at approximately 40.4 weight % by solids of the thermosensitive recording layer, which reads on these claims [0153]-[0161].
Also, they teach that other developers may be mixed with the urea-compound according to formula 1 [0093] and [0094]. Examples of these include N-[2-(3-phenylureido)phenyl]benzenesulfonamide, which reads on the third urea compound claimed, or the diphenylsulfone compound D-90 [0093] and [0154]. Additionally, the Examples include a protective layer coating solution 4 that has a non-core shell acrylic resin with a Tg of 55 C and an MFT of 18 C that is present at approximately 21.7 wt% of the solid layer (= 2/9.22) [0166]; however, they do not specifically teach an example with a combination of developers with this protective layer composition or the solid content of the developers.
It would have been obvious to one having ordinary skill in the art to have substituted the protective layer coating solution 4 for the protective layer composition used in Example 7. This would have been a simple substitution that would have had predictable results as they are both exemplary protective layer coating solutions.
It would have been obvious to one having ordinary skill in the art to have combined in the known developer N-[2-(3-phenylureido)phenyl]benzenesulfonamide with the urea developer according to formula 1 as this is specifically suggested in the reference at [0093]-[0094]. The results of such a combination would have been predictable; further, it is prima facie obvious to combine two compositions useful for the same purpose to form a third composition useful for the same purpose.
It would have then been obvious to have combined in the known developer N-[2-(3-phenylureido)phenyl]benzenesulfonamide in any amount of the layer, including from 5 to 50 wt % such that the layer has the proper sensitivity to thermal recording.
With regard to claim 25, it would have been obvious to one having ordinary skill in the art to have combined in the known the diphenylsulfone compound D-90 with the urea developer according to formula 1 as this is specifically suggested in the reference at [0093]-[0094]. The results of such a combination would have been predictable; further, it is prima facie obvious to combine two compositions useful for the same purpose to form a third composition useful for the same purpose. It would have been obvious to have combined in the diphenylsulfone compound D-90 in any amount, including from 1-10 weight % of the total amount of all color developing agents, in order to improve the storage stability of the recording layer.
Claims 17, 20 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Kinishi et al. (WO 2019/044462), of which US 2021/0340099 is the US national stage entry and will be used as a translation, in view of Ogino et al. (JP 2015-080852) as evidenced by Kawasaki et al. (US 2022/0161588).
With regard to claims 17 and 20, Kinishi et al. teach a thermosensitive recording material that may comprise a thermosensitive recording layer and a protective layer on the recording layer, which reads on applicants’ thermosensitive recording layer [0195] and [0204]. The thermosensitive recording layer comprises a basic leuco dye that is colorless or light-colored, which reads on applicants’ electron donating leuco dye, and a mixture of developers that may include N,N’-di-[3-(p-toluenesulfonyloxy)phenyl]urea, which reads on applicants’ first urea compound according to formula (6), with NKK-1304, which reads on applicants’ third urea [0061], [0063] and [0174]. In the example 1, the N,N’-di-[3-(p-toluenesulfonyloxy)phenyl]urea is used at approximately 40.4 weight% of the total solids, which reads on the claim [0269]-[0270]. The protective layer may comprise a binder that is the same as for the recording layer, such as an acrylate resin, which reads on applicants’ acrylic resin [0185] and [0205]; however, Kinishi et al. does not specifically teach an acrylic resin having the MFT claimed or the combination of developers claimed.
Ogino et al. teach a thermosensitive recording medium with a recording layer formed from a leuco dye dispersion liquid and a first color-developing agent liquid A1 that is NKK-1304, which reads applicants’ third urea compound, and a protective layer having a non-core shell acrylic resin ASN1004K, which has a Tg of 55 C [0079], [0088] and [0092]. As evidenced by US 2022/0161588, ASN1004K has a minimum film forming temperature of 18 C [0093] and Table 1. They also teach that the binder in the protective layer can be from 30 to 300 parts by weight relative to 100 parts by weight of pigment [0028] and [0070].
Since Kinishi et al. and Ogino et al. are both drawn to thermosensitive recording media, it would have been obvious to one having ordinary skill to have substituted the acrylic resin binder ASN1004K as the acrylate resin binder material of Kinishi et al. The results of such a substitution would have predictable to one having ordinary skill since these are known acrylic resin for protective layers in thermal recording media.
The Examiner also notes that the parts by weight ranges of the binder in the protective layer of the prior art overlaps with the range of claim 17, and therefore a prima facie case of obviousness exists.
It would also have been obvious to one having ordinary skill in the art to have combined in the known developer NKK-1304 with the N,N’-di-[3-(p-toluenesulfonyloxy)phenyl]urea as this is specifically suggested in the reference at [0061]. The results of such a combination would have been predictable; further, it is prima facie obvious to combine two compositions useful for the same purpose to form a third composition useful for the same purpose.
It would have been obvious to have combined in the known developer NKK-1304 in a minor amount with N,N’-di-[3-(p-toluenesulfonyloxy)phenyl]urea, including making the developer dispersion of the liquid B of the example have 2.5 to less than 10 parts of the NKK-1304 to 17.5 to 10 parts of the N,N’-di-[3-(p-toluenesulfonyloxy)phenyl]urea, which would result in a weight % of from approximately 5 to 20.2 weight % of the third urea [0269]-[0270].
With regard to claim 25, it would have been obvious to one having ordinary skill in the art to have combined in the known developer PF-201 with the N,N’-di-[3-(p-toluenesulfonyloxy)phenyl]urea as this is specifically suggested in the reference at [0061]. The results of such a combination would have been predictable; further, it is prima facie obvious to combine two compositions useful for the same purpose to form a third composition useful for the same purpose. It would have been obvious to have combined in the PF-201 in any amount, including from 1-10 weight % of the total amount of all color developing agents, in order to improve the storage stability of the recording layer.
Claims 17, 20, 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Muto et al. (JP 2018-043363), machine translation included, in view of Ogino et al. (JP 2015-080852) as evidenced by Kawasaki et al. (US 2022/0161588) and Okamoto et al. (JP 2014-173202).
With regard to claims 17 and 27, Muto et al. teach a heat-sensitive recording material having a heat-sensitive recording layer, which reads on applicants’ thermosensitive recording layer, and a protective layer [0050]. The protective layer may comprise a binder that is a styrene-acrylic resin, which reads on applicants’ acrylic resin [0050] and [0062]. The thermosensitive recording layer can comprise the compound number 1 as a developer, which reads on applicants’ second urea compound and the fluoran color former in Liquid B, which reads on applicants’ electron donating leuco dye [0025] and [0058]-[0061]. Muto et al. teach making the compound according to their formula (1) be from 10 to 50% by mass of the thermal recording layer [0035]. Also, the specific developer compound number 1 in example at [0058]-[0061] is present at approximately 29.2 mass% based on the total solids of the thermal recording material. Muto et al. also teach using a combination of color-developing compounds in combination with the compound according to formula (1) [0041]. As one example, they teach that you can use N-[2-(3-phenylureido)pheny]benzenesulfonamide, which reads on applicants’ third urea [0041]; however, Muto et al. does not specifically teach an acrylic resin having the MFT claimed or the combination of developers.
It would have been obvious to one having ordinary skill in the art to have combined in the known developer N-[2-(3-phenylureido)pheny]benzenesulfonamide with the compound according to formula (1) of Muto et al. as this is specifically suggested in the reference at [0041]. The results of such a combination would have been predictable; further, it is prima facie obvious to combine two compositions useful for the same purpose to form a third composition useful for the same purpose.
It would have been obvious to have combined in the known developer N-[2-(3-phenylureido)pheny]benzenesulfonamide in a minor amount with the compound according to formula (1), including making the developer composition of the liquid A of the example at [0059] have 2.6 to less than 7.5 parts of the N-[2-(3-phenylureido)pheny]benzenesulfonamide to 12.4 to 7.5 parts of the compound according to formula (1), which would result in a weight % of from approximately 5 to 14.6 weight % of the third urea in the recording layer [0058]-[0061].
Ogino et al. teach a thermosensitive recording medium with a recording layer formed from a leuco dye dispersion liquid and a first color-developing agent liquid A1 that is NKK-1304, which reads applicants’ third urea compound, and a protective layer having a non-core shell acrylic resin ASN1004K, which has a Tg of 55 C [0079], [0088] and [0092]. As evidenced by US 2022/0161588, ASN1004K has a minimum film forming temperature of 18 C [0093] and Table 1. As evidenced by JP 2014-173202, ASN1004K is a styrene-acrylic polymer [0042].
Since Muto et al. and Ogino et al. are both drawn to thermosensitive recording media, it would have been obvious to one having ordinary skill to have substituted the styrene acrylic resin binder ASN1004K as the styrene acrylic resin binder material of Muto et al. The results of such a substitution would have predictable to one having ordinary skill since these are known styrene-acrylic resin for protective layers in thermal recording media.
With regard to claim 20, this claim is not requiring the use of the first urea compound, but rather further defining it when it is used. Given the fact that the second urea compound is taught in Muto et al., this means claim 20 is also rendered obvious.
With regard to claim 25, it would have been obvious to one having ordinary skill in the art to have combined in the known developer bisphenol A with the compound according to their formula (1) as this is specifically suggested in the reference at [0041]. The results of such a combination would have been predictable; further, it is prima facie obvious to combine two compositions useful for the same purpose to form a third composition useful for the same purpose. It would have been obvious to have combined in the bisphenol A in any amount, including from 1-10 weight % of the total amount of all color developing agents, in order to form a proper recording layer.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 17, 20, 25 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,053,997.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to a thermosensitive recording medium that may have a urea compound according to copending claim 8 as the developer of claim 1 and they may both have an acrylic resin having a Tg of from 50 to 95 C in a protective layer (copending claim 7); however, the copending claims do not specifically teach the minimum film forming temperature claimed, the urea developer is used in the independent claim or a mixture of developers.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to col. 11, 12 and 22 of the specification of Patent #12,053,997 which defines what is meant by the acrylic resin having the Tg of 50 to 95 C in that it may be a non-core shell acrylic resin with an MFT of 18 C and what is meant by the color developing agent in that it may be a combination/mixture of the urea compound with other color developer agents. Among those other developing agents is N-[2-(3-phenylureido)phenyl]benzenesulfonamide; therefore, it would have been obvious to one of ordinary skill in the art to made the acrylic resin of copending claim 7 be the non-core shell acrylic resin with having the MFT of 18 C, and to have made the color developing agent of the copending claims be a combination of the urea compound of claim 8 and N-[2-(3-phenylureido)phenyl]benzenesulfonamide as presently claimed.
It would also have been obvious to have made the amount of acrylic resin be any amount of the of the protective layer, including from 15 to 50 wt%, to have made the protective layer have sufficient protection without wasting materials, and to have made the developers be any amount of the thermosensitive recording layer, including from 1 to 70 wt%, such that there was enough developer to color the layer, while not being so much that the layer did not stay coherent.
It would also have been obvious to have made the amount of N-[2-(3-phenylureido)phenyl]benzenesulfonamide be any amount, including from 5 to 50 wt% in order to form a working thermosensitive recording layer.
Response to Arguments
Applicant’s arguments, see Remarks, filed 3/13/2026 and 3/3/2026, with respect to the previous 112(b) rejections and the rejections using Ogino et al. as a primary reference have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicant's arguments filed 3/13/2026 and 3/3/2026 have been fully considered but they are not persuasive.
Applicants argue on pages 10 and 12 that there are unexpected results for Examples 1-7 of their Table 2 that would provide evidence of secondary considerations that would overcome the obviousness rejections.
The Examiner respectfully disagrees and notes that the second urea compound currently being claimed was not tested in any of the examples (please compare with “urea compound 3” in solution A3), and therefore there is no evidence of unexpected results for the combination of the second urea claimed with either of the first or third urea compounds.
Applicants argue on page 11 of their Remarks that Hirai et al. do not teach or suggest the non-core shell acrylic resin having the Tg and MFT claimed.
The Examiner respectfully disagrees and notes that protective layer coating solution 4 of their examples teaches this material [0166]. The Examiner reminds applicants that Hirai et al. has a common assignee.
Applicants argue on page 12 of their Remarks that Kinishi et al. do not teach or suggest a non-core shell acrylic resin having the Tg claimed.
The Examiner respectfully disagrees and notes that applicants appear to be arguing the reference individually when the rejection is based upon a combination of references. The Examiner maintains that the combination of Kinishi in view of Ogino would render obvious previous claim 19 and a non-core shell acrylic resin having the glass transition temperature claimed for the reasons set forth above.
Applicants argue on page 12 of their Remarks that the Examiner engaged in hindsight reconstruction with Muto et al. to arrive at the claimed invention and there would be undue amount of experimentation to arrive at the specific combination of urea compounds.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The reference clearly teaches using a combination of color developers at [0041].
Also, it appears that applicants are suggesting that Muto et al. does not contain an enabling disclosure. It has been held that the burden is on applicants to show that the reference is inoperable, see MPEP 2121, including 2121.01. Since the reference clearly teaches using a combination of color developers at [0041] and applicants have not provided evidence that the reference is inoperable, the Examiner maintains that the reference is operable.
Applicants argue on page 8 of their Remarks that the copending claims do not render obvious the new limitations in the pending claims.
The Examiner disagrees and notes that the patented claims render obvious the pending claims for at least the reason that copending claim 7 renders obvious the non-core shell acrylic resin of the pending claims, and therefore the Examiner maintains the rejection is proper for the reasons set forth above.
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
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