DETAILED ACTION
Response to Amendment
Applicant's amendment filed 5/4/2026 has been entered. Currently, claims 1-7, 9-15 and 21-26 are pending, claims 8 and 16-20 are canceled, claims 5-7 and 9-15 are withdrawn and claims 21-26 are new.
Specification
The disclosure is objected to because of the following informalities:
In [0033], the phrase “aryloy group” is objected to as this is not a chemical group. Please delete this or confirm what this group should be according to the parent applications.
In [0039] and [0040], there is no “n4” in formulae (IV)-2 and (IV)-3, and therefore these portions that describe n4 are objected to.
Appropriate correction is required.
Claim Objections
Claim 23-26 is objected to because of the following informalities:
In claim 23, the phrase “(Compound (I))” is objected to grammatically as it is parenthesis and it duplicates what appears immediately after it. The objection can be overcome by deleting the phrase.
In claim 23, the phrases “[Chem. 1]” through “[Chem. 22]” (seventeen instances) is objected to grammatically. The objection can be overcome by deleting the phrases.
In claim 23, there are multiple periods not at the end of the claim that are objected to grammatically (see pages 7 and 11). The objection can be overcome by deleting the extra periods.
In claim 23, the phrase “[Chem. 1]” through “[Chem. 22]” (seventeen instances) is objected to grammatically. The objection can be overcome by deleting the phrases.
In claim 23 on line 21, the phrase “and B is the linking group” is objected to grammatically. The objection can be overcome by changing the phrase to “and when B is the linking group”.
In claim 23 on page 13 of the claims, the phrase “[0050]” is objected to grammatically. The objection can be overcome by deleting the phrase.
In claim 24, the phrase “[Chem. 28]” is objected to grammatically. The objection can be overcome by deleting the phrase.
In claims 25 and 26, the phrase “the solvent consists of the water and the alcohol of the mixed solvent of water and alcohol” is objected to grammatically. The objection can be overcome by changing the phrase to “the solvent consists of the water and the alcohol” which is how the claims will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 phrase “20 to 45% by mass or greater” renders the claim indefinite as it is a broad/narrow range in the same claim. The rejection can be overcome by changing the phrase to “20 to 45% by mass” which is how the claim will be interpreted.
In claim 23, the B linking groups on page 7 of the claims renders the claim indefinite as it is not a proper closed Markush group. The rejection can be overcome by inserting the word “and” between the second to last and last members of the group.
In claim 23 on lines 20-21, the limitations of R2 being a “substituted C1-C8 alkyl group” renders the claim indefinite as it is a broad/narrow range in the same claim. Lines 20-21 conflict with the number of carbon atoms in the alkyl of lines 15-18, and therefore it is unclear what R2 can be. The rejection can be overcome by changing the lines 20-21 to comply with lines 15-18.
In claim 23, the phrase “aryloy group” renders the claim indefinite as this is not a recognized chemical group. The rejection can be overcome by deleting the phrase.
In claim 23 on pages 8-10 of the claims, the limitations in parenthesis render the claim indefinite as it is unclear if they are required to meet the claim. The limitations in question are the “(where…group)”, “(where”, “(R14…group)”, and “(General Formula A)” (eight instances). The rejection can be overcome by removing the parenthesis.
In claim 23, the phrase “where R2, R3, R4, R5, and R6 are each independently selected from (i) to (vii)…(vii) X is a single bond” renders the claim indefinite X is different from the R groups on the ring of formula (A). The rejection can be overcome by changing the selected from to be from (i) to (vi) and make the limitations of X a separate requirement.
In claim 23 on page 10 of the claims, the limitations that R1 to R3 in (IV)-2 is “identical to R1 to R3 of General Formula (I)” renders the claim indefinite as there is no R3 in General Formula (I).
In claims 23 on page 10 of the claims, there is no “n4” in the formula (IV)-2 or (IV)-3, and therefore claiming the limitations of n4 renders the claim indefinite.
In claim 23 on page 11 of the claims, the limitations “where two or more A1” renders the claim indefinite as the formula does not have more than two A1.
In claim 23 on pages 11-13 of the claims, the limitations “aromatic compound residue” (seven instances) renders the claim indefinite as the term “residue” is not defined in the specification and one of ordinary skill would not know the metes and bounds of this phrase. It is unclear if the residue of an aromatic compound could be non-aromatic or must still be aromatic.
In claim 23 on pages 12-13 of the claims, the limitations “aliphatic compound residue” (two instances) renders the claim indefinite as the term “residue” is not defined in the specification and one of ordinary skill would not know the metes and bounds of this phrase. It is unclear if the residue of an aliphatic compound could be non-aliphatic or must still be aliphatic.
In claim 23 on page 13 of the claims, the limitations that C “may not exist” renders the claim indefinite because the one cannot require a substituent and then delete the substituent. It is unclear what would then exist if C did not exist, which renders the claim indefinite.
In claim 23, the group of structural formulae on page 13 of the claims renders the claim indefinite as it is not a proper closed Markush group. The rejection can be overcome by inserting the word “and” between the second to last and last members of the group.
In claim 23 on page 13 of the claims, the limitations that “D is at least one or none selected from” renders the claim indefinite because this is an improper Markush group. It is unclear what would D may be if it is none of the members of the listed group, which renders the claim indefinite.
Claim Rejections - 35 USC § 103
Claims 1-4, 21-23, 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Kabashima et al. (US 2001/0044553).
With regard to claims 1-3, 21-23, 25 and 26, Kabashima et al. teach a color-producing marking agent, which reads on applicants’ thermosensitive recording layer forming liquid, that can comprise a colorless dye precursor, which reads on applicants’ electron-donating compound, a urea-urethane compound developer such as formula (E-22), which reads on applicants’ preferred electron-accepting compound of formula (VI) of their specification, and an admixture of water with methanol or ethanol, which reads on applicants’ solvent consisting of water and alcohol [0179], [0407] and [0408]. Since the urea-urethane compound developer is identical to one of the preferred developers in applicants’ specification, it will intrinsically possess the solubility to 100% ethanol at 20 C as claimed; however, Kabashima et al. do not specifically teach that the alcohol mass % claimed.
It would have been obvious to one having ordinary skill in the art to have mixed the ethanol or methanol with water in any amount, including making the alcohol be 20% by mass or greater, 40% by mass or greater or 20 to 45% by mass of the entire solvent as claimed, to properly dissolve or disperse all of the components of the marking composition while not using so much alcohol to adversely affect the coating composition or to waste money.
With regard to claim 4, the marking agent can also contain a recording sensitivity improving agent, such as a compound that will absorb the laser beams for recording, which reads on the photothermal conversion material claimed [0402] and [0407]
Claims 1 and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki et al. (WO 2021/095751) of which US 11,912,052 is the US national stage and will be used as a translation.
Claim 1 is being rejected clerically as claims 21-26 depend from claim 1.
With regard to claims 1 and 21-26, Kawasaki et al. teach a thermosensitive recording medium having a thermosensitive recording layer comprising a colorless leuco dye, which reads on applicants’ electron-donating compound, and an electron accepting color developing agent, which reads on applicants’ electron-accepting compound (col. 2, lines 33-41). An example of the color developing agent is N, N′-di-[3-(p-toluenesulfonyloxy) phenyl] urea, which reads on the structure (V) in claim 23 and the compound in claim 24 (col. 4, lines 12-15). Since the urea compound developer is identical to one of the preferred developers in applicants’ specification, it will intrinsically possess the solubility to 100% ethanol at 20 C as claimed. The leuco dye and color developing agent are placed into coating solutions for preparing the recording layer, which reads on applicants’ recording layer forming liquid, wherein water or alcohol can be used for the coating solution (col. 12, lines 54-63); however, Kawasaki et al. do not teach a mixture of water and alcohol.
It would have been obvious to one having ordinary skill in the art to have mixed the alcohol with water in any amount, including making the alcohol be 20% by mass or greater, 40% by mass or greater or 20 to 45% by mass of the entire solvent as claimed, to properly dissolve or disperse all of the components of the marking composition while not using so much alcohol to adversely affect the coating composition or to waste money. It is prima facie obvious to combine two compositions used for the same purpose to form a third composition useful for the same purpose, see MPEP 2144.06.
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive.
Applicants argue on page 16 of their Remarks that the solvent having alcohol in an amount of 20% by mass or greater is not suggested in Kabashima et al.
The Examiner respectfully disagrees and notes that Kabashima et al. specifically teaches an admixture of water with methanol or ethanol. Once having this factual finding, it would have been obvious to one having ordinary skill in the art to have mixed these solvents in any amount with a reasonable expectation of success of forming a proper recording layer forming liquid. There are two solvents taught in admixture and it is within the technical grasp of one having ordinary skill to pursue the known options of the mixture, wherein the Examiner has properly set forth the obviousness for this and maintains his position.
Applicants argue on pages 16-19 that the ranges claimed are critical and have presented evidence in their arguments to this effect.
The evidence in applicants’ Remarks is not persuasive for multiple reasons. First, attorney arguments are not evidence. If applicants wish these new experiments to be properly considered, they need to be presented in affidavit or declaration form, see MPEP 716.01(c).
Second, applicants’ claims are not commensurate in scope with the evidence in their specification. The recording layer forming liquids 1 to 10 use only five specific electron-accepting compounds with three specific alcohol solvents at three mass percentages (21%, 34% and 45%), but applicants’ claims are vastly broader than this. These five compounds with three specific alcohol solvents at the alcohol mass percentages in the examples would not support unexpected results for scope of the claims.
Additionally, the comparative results for thermosensitive recording layer forming liquid 25 shown on page 17 of applicants’ Remarks would not be sufficient to establish criticality for the endpoint of 20% of alcohol claimed as the example 1 of Table 2 is at 21% alcohol and this comparative example is at 15%. There is no example at 20% alcohol to show unexpected results of this endpoint or the range claimed.
Lastly, the examples with 34% and 45% alcohol are not sufficient to establish criticality for the endpoint of 40% by mass or greater of alcohol in claim 21; furthermore, there are other differences between these examples that could explain the results, which means applicants’ arguments are unpersuasive. Applicants are using developer compound 5 in each of the examples 15-28, while examples 11-14 use developer compounds 1-4, respectively. These examples do not establish the criticality of the endpoint or the range claimed. Also, the difference in the composition of the thermosensitive recording layer means there is not a sufficient comparison to establish criticality.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Gerard Higgins/Primary Examiner, Art Unit 1785
Prosecution Insights