DETAILED ACTION
Response to Amendment
Applicant's amendment filed 2/9/2026 has been entered. Currently, claims 15, and 21 are pending, claims 1-14, 16-20 and 22 are cancelled.
Claim Rejections - 35 USC § 103
Claims 15 and 21 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.
With regard to claim 15, Kinishi et al. teach a thermosensitive recording material that may comprise a base sheet, which reads on applicants’ substrate, an undercoat layer on the base sheet, and a thermosensitive recording layer on the undercoat layer, which reads on applicants’ thermosensitive recording layer [0195]. 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 N,N’-di-[3-(p-toluenesulfonyloxy)phenyl]urea is used at approximately 40.4 weight% of the total solids, which reads on the range of claim 15 [0269]-[0270]. The undercoat layer of the example can comprise a hollow plastic particle as an organic pigment having a hollow rate of 55%, which reads on applicants’ volume hollow percentage, and the total amount of organic and inorganic pigments can be approximately 82% by weight of the undercoat solids [0268]. The ratio between the inorganic and organic pigments in the undercoat layer can be from 90:10 to 30:70, which overlaps with the 50 weight % or more of pigment being plastic hollow particles as claimed [0200]; however, Kinishi et al. does not teach a specific example having all of these materials.
Since there is overlap in the range of the prior art with the weight % range 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). It would have been obvious to have made the undercoat layer of Kinishi et al. have a weight ratio of inorganic to organic pigments be from 50:50 to 30:70 as this is within the range taught in the art, which would result in the undercoat layer having 50 weight % or more of the pigment being hollow plastic particles.
With further regard to claim 15, it would 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 and would read on the parts by weight of the third versus the first urea claimed [0269]-[0270].
With regard to claim 21, 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 15 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Muto et al. (JP 2018-043363), machine translation included, in view of Yamane et al. (US 2015/0367663).
With regard to claim 15, Muto et al. teach a heat-sensitive recording material having a support, which reads on applicants’ substrate, an intermediate layer, which reads on applicants’ undercoat layer, and a heat-sensitive recording layer, which reads on applicants’ thermosensitive recording layer [0050]. 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; however, Muto et al. does not teach the composition of the intermediate layer or a mixture of two urea compounds.
Yamane et al. teach a heat-sensitive recording material that may comprise a support, which reads on applicants’ substrate, an undercoat layer on the support, and a heat-sensitive recording layer on the undercoat layer, which reads on applicants’ thermosensitive recording layer [0093]. The undercoat layer of the example can comprise a hollow plastic particle having a hollow ratio of 55%, which reads on applicants’ volume hollow percentage [0118]. The total amount of inorganic pigment and hollow plastic particle can be from 10 to 90 mass% of the undercoat layer and the amount of hollow plastic particle can be from 10 to 90 mass% of the total solids of the undercoat layer [0074] and [0077].
Since Muto et al. and Yamane et al. are both drawn to intermediate/undercoat layers for thermosensitive recording media, it would have been obvious to one having ordinary skill in the art to have substituted the undercoat of Yamane et al. as the intermediate layer of Muto et al. The results of such a substitution would have been predictable as the layers are for the same purpose in the recording medium.
Since there is overlap in the range of the prior art with the weight % range 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).
It would have been obvious to have made the undercoat layer of Muto et al. in view of Yamane et al. have the total amount of inorganic pigment and hollow plastic particle be from 50 to 90 weight % as this is within the range taught in the art. It would also have been obvious to have made the hollow plastic particles be any portion of the 50 to 90 weight % of the total of both particles, including more than 50% of the total of the two to less than 100 weight % of the total of the two as this overlaps with the ranges taught at [0074] and [0077] of Yamane et al.
With further regard to claim 15, Muto et al. 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 is applicants’ third urea [0041].
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 less than 14.6 weight % of the third urea in the recording layer and would read on the parts by weight of the second versus the third urea claimed [0058]-[0061].
With regard to claim 21, 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.
Response to Arguments
Applicant’s arguments, see Remarks, filed 2/9/2026, with respect to the previous rejections based on Ishibashi et al. and Yamane et al. have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicant's arguments filed 2/9/2026 have been fully considered but they are not persuasive.
Applicants argue on page 9 of their Remarks that the Examiner engaged in hindsight reconstruction 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 that there are unexpected results for Examples 5-11 of their Table 1 that would provide evidence of secondary considerations that would overcome the obviousness rejections.
The Examiner respectfully disagrees and notes that the evidence in applicants’ Table 1 would seem to suggest that there are predictable results from the combination of either the combination of urea compounds 1+2 or 1+3. The “fair” rating in Table 1 for the individual urea compounds (see Examples 1, 3 and 4) are for different properties when used in the combination of urea compounds 1+2 or 1+3, and therefore one would expect that when you combine the individual urea compounds, e.g. Examples 5 -10, you would get the benefits of both of the compounds.
Additionally, the Examiner notes that the claims are not commensurate in scope with the examples for the following reasons.
First, Examples 5-9 and 11 are each drawn to a 1:1 weight ratio of the color developers and example 10 is a 2:1 weight ratio. These examples would not provide unexpected results over the entire claimed ranges of the relative parts by weight in claim 15.
Also, the second urea of claim 15 was not tested in the Examples of Table 1, and therefore there is no evidence of unexpected results for this compound.
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.
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/Gerard Higgins/Primary Examiner, Art Unit 1785