DETAILED ACTION
Response to Amendment
Applicant's amendment filed 1/8/2026 has been entered. Currently, claims 1, 5, 8, 10-17 and 19-25 are pending, claims 2-4, 6, 7, 9 and 18 are canceled, and claims 20-25 are new.
Claim Rejections - 35 USC § 112
Claims 1, 5, 8, 10-17 and 19-25 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 latent heat material “microencapsulated in microcapsules separately from the thermochromic material” in the specification as originally filed. The closest limitations for this are at [0031] that the LHM is “individually contained in microcapsules”, but this does not provide support for the concept claimed.
In claims 1 and 17, the Examiner does not find support for the limitations that the LHM “is configured to remain microencapsulated while in a liquid” state/phase in the specification as originally filed. The closest limitations for this are that the LHM “remains microencapsulated throughout the duration of the thermal printing and color development process” or “the thermal printing process” at [0004] and [0031] but this is not the same scope as remaining microencapsulated “while in a liquid state” or phase. In a liquid state could be at any temperature as a liquid, while the thermal printing and color development process will occur in a narrower range of temperatures.
In claims 5 and 22, the Examiner does not find support for the limitations that “a solidification point of the LHM is higher than a solidification point of the melting agent” in the specification as originally filed. The specification and original claims refer to the melting point of the LHM being lower than a temperature of the applied heat, but a comparison is never made between the “solidification point” of the melting agent and the LHM.
In claim 17, the Examiner does not find support for the limitations of a latent heat material “microencapsulated in microcapsules separately from the leuco dye” in the specification as originally filed. The closest limitations for this are at [0031] that the LHM is “individually contained in microcapsules”, but this does not provide support for the concept claimed.
In claim 17, the Examiner does not find support for the limitations that the leuco dye “retains the changed color state when the leuco dye falls below the predetermined temperature threshold” in the specification as originally filed. There is no disclosure of retaining changed color when falling below the predetermined temperature threshold.
In claim 17, the Examiner does not find support for the limitations that “when the thermochromic composite exceeds the predetermined temperature threshold, the LHM melts” in the specification as originally filed. The closest limitations are at [0017] but this says that the “LHM melts in response to the applied heat”, but this does teach that the melting point of the LHM is linked to, or the same as, the predetermined temperature threshold. The applied heat is not the same as the predetermined temperature threshold.
In claim 17, the Examiner does not find support for the limitations that “the LHM having a solidification above the predetermined temperature threshold” in the specification as originally filed. The specification and original claims refer to the melting point of the LHM being lower than a temperature of the applied heat [0005], but a comparison is never made between the “solidification point” of the LHM versus the predetermined temperature threshold.
In claim 22, the Examiner does not find support for the limitations that the “leuco dye comprises a color former, a color developer, and a melting agent” in the specification as originally filed. A leuco dye is not a color developer or a melting agent and is an example of a color former, and therefore there is no support to say a leuco dye comprises these materials.
Claims 22 and 23 are 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 22, the limitations that the “leuco dye comprises a color former, a color developer, and a melting agent” renders the claim indefinite because a leuco dye is not a color developer or melting agent and a leuco dye is an example of a color former, so it is unclear how it can comprise a color former. The rejection can be overcome by claiming that the thermochromic composite “further comprises a color developer and a melting agent”, which is how the claim will be interpreted.
Claim Rejections - 35 USC § 102
Claims 1, 10-14, 17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ekkehard et al. (DE 19959806), machine translation included.
With regard to claims 1, 12-14, 17 and 20, Ekkehard et al. discloses a paper, which reads on applicants’ substrate, coated with paper coating compound that includes a leuco dye, a developer, and microcapsules, which reads on applicants’ thermal printable media having a composite coupled to the substrate or the thermochromic composite [0060] and [0063]. The leuco dye and developer read on applicants’ thermochromic material and they form a black image that is sharp when printed using thermal printing, which reads on applicants’ irreversibly changes responsive to exceeding a predetermined temperature threshold and also reads on the leuco dye retaining a changed color when it falls below a predetermined temperature threshold [0063] and [0064]. This reaction between the leuco dye and developer will inherently be irreversible as this would be the default presumption unless mentioned otherwise because this is how these compounds react with each other [0063] and [0064].
The microcapsules have a lipophilic substance as the core material, such as polyethylene wax that stores “heat energy through a phase transition from solid to liquid and then release it again”, which reads on applicants’ LHM and will inherently meet the functional limitations of being capable of melting in response to applied heat above a predetermined temperature threshold and after the applied heat ceases releasing a stored portion of the applied heat as it resolidifies, and having a solidification point above the predetermined temperature threshold since there is no limitation on what the predetermined temperature threshold may be [0009] and [0064]. The lipophilic substances will remain microencapsulated when it is in the liquid phase, and therefore it will inherently be inert to the thermochromic material or leuco dye.
With regard to claims 10 and 11, given the fact that the thermally printable coated papers are identical to that claimed and preferentially disclosed, the thermally printable coated papers of Ekkehard et al. will inherently have the thermochromic print density index claimed.
Claim Rejections - 35 USC § 103
Claims 5, 8, 19 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Ekkehard et al. (DE 19959806) as evidenced by “Fisher Scientific” (https://www.fishersci.co.uk/shop/products/benzyl-2-naphthyl-ether-99-thermo-scientific/11410457).
With regard to claims 5, 8 and 22-24, Ekkehard et al. teach all of the limitations of claims 1 and 17 above. They also teach that the lipophilic substances can transition from solid-liquid phase transition in the temperature range of 40 to 120 C, which reads on applicants’ solidification point of the LHM, and the paper coating compound can have a leuco dye, which reads on applicants’ color former, a developer and a sensitizer, such as benzyl naphthyl ether, which reads on applicants’ melting agent that will intrinsically become a solvent for the color former and color developer [0059] and [0063]. Benzyl Naphthyl ether melts at approximately from 96-98 C as evidenced by “Fisher Scientific”, which reads on applicants’ solidification point of the melting agent; however, the prior art does not teach the solidification/melting point of the LHM is higher than the solidification/melting point of the melting agent.
The Examiner notes that the ranges of the prior art overlap with the ranges claimed. 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 solid-liquid phase transition any amount within the range taught in the prior art, including from more than 98 to 120 C. These temperatures read on the LHM being configured to melt to an applied heat above the predetermined temperature threshold of claim 8.
With regard to claim 19, Ekkehard et al. teach all of the limitations of claim 17 above; however, they do not specifically teach the amount of LHM in the paper coatings.
It would have been obvious to one having ordinary skill to have made the amount of the lipophilic substances in the microcapsules be any amount of the paper coating, including from 5 to 50 weight percent as claimed, such that the lipophilic substances properly store enough heat energy to prevent rapid cooling, while not being such a large part of the composite that there is not enough color former and developer for forming a dark enough image.
Claim 15 are rejected under 35 U.S.C. 103 as being unpatentable over Ekkehard et al. (DE 19959806) in view of Noda et al. (US 2019/0152248).
Ekkehard et al. teach all of the limitations of claim 1 above; however, they do not teach the thermal printable media in the form of a roll.
Noda et al. teach a thermosensitive recording medium that includes a color forming leuco dye and can be in the form of a roll [0008] and [0115].
Since Ekkehard et al. and Noda et al. are both drawn to thermal recording media with leuco dyes, it would have been obvious to one having ordinary skill in the art to have made the coated paper of Ekkehard et al. be formed into a roll as taught in Noda et al. so that the paper can be sold in a compact form for use in the desired intended purpose, such as in a checkout register.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Ekkehard et al. (DE 19959806) in view of Mori et al. (6,060,427).
Ekkehard et al. teach all of the limitations of claim 1 above; however, they do not teach the thermal printable media is temporarily adhered to a liner.
Mori et al. teach a thermosensitive recording medium that includes a color forming leuco dye and can be in the form of a label with a removable liner [(col. 10, lines 55-61).
Since Ekkehard et al. and Mori et al. are both drawn to thermal recording media with leuco dyes, it would have been obvious to one having ordinary skill in the art to have made the coated paper of Ekkehard et al. be formed into a label having a liner as taught in Mori et al. so that the paper can be sold as a label.
Response to Arguments
Applicant’s arguments, see Remarks, filed 1/8/2026, with respect to the previous claim objections, 112(b) rejections and the prior art rejections based on Fujita et al. have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 1/8/2026 have been fully considered but they are not persuasive.
Applicants argue that the new limitations added to claims 1 and 17 have overcome the prior art and have placed the claims in condition for allowance.
While the Examiner agrees that the limitations that the “thermochromic material irreversibly changes” and the latent heat material is “in microcapsules separately from” the thermochromic material or leuco dye has overcome the Fujita et al. reference, these amendments have necessitated further search and consideration.
The Examiner has cited Ekkehard et al. (DE 19959806) which teaches the new limitations claimed, and therefore the Examiner has set forth rejections above explaining how these new limitations are met by the prior art.
Additionally, after further consideration after speaking with applicants’ representative concerning the potential allowability of the scope of claims 21 and 25, the Examiner has found 112(a) new matter issues in the claims. Currently, no claims are considered in condition for allowance.
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