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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/22/2026 has been entered.
Response to Amendment
Applicant's amendment filed 1/22/2026 has been entered. Currently, claims 1-20 are pending and claims 5-20 are withdrawn.
Claim Rejections - 35 USC § 103
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kabashima et al. (US 2001/0044553).
With regard to claims 1-3, 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 [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 is 20% by mass or greater of the mass of the solvent.
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 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]
Response to Arguments
Applicant’s arguments, see Remarks, filed 1/22/2026, with respect to the 112(b) rejections and the previous rejections based on O’Neil have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive.
Applicants argue that the amendment to claim has overcome O’Neil, and therefore the claims are in condition for allowance.
While the Examiner agrees that the amendment to claim 1 has overcome O’Neil, this has necessitated further search and consideration. After further search, the reference to Kabashima et al. has been found that renders obvious claims 1-4 for the reasons noted 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.
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