DETAILED ACTION
Response to Amendment
Applicant's amendment filed 3/2/2026 has been entered. Currently, claim 3 is pending and claims 1 and 2 are cancelled.
Claim Rejections - 35 USC § 103
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hirai et al. (JP 2020-104274), machine translation included, in view of Zetzl et al. (WO 2015/197048).
With regard to claim 3, Hirai et al. teach a thermosensitive recording medium having a heat-sensitive recording layer containing a colorless leuco dye, which reads on applicants’ coloring substance, and a developer containing an isolated lignin including kraft lignin on a support [0005] and [0006]; however, they do not specifically teach how the lignin was made or the dimethyl disulfide content of the lignin.
Zetzl et al. teach a method for deodorizing kraft lignin by removing volatile organic compounds so that the lignin can be used in consumer-oriented applications [0004], [0010] and [0015]. Examples of these types of volatile organic compounds include dimethyl disulfide [0019]-[0020]. The mass proportion of volatile organic compounds can be reduced by at least 99% using the process of Zetzl et al. [0049]-[0050].
Since Hirai et al. and Zetzl et al. are both drawn to kraft lignins in consumer-oriented applications, it would have been obvious to one having ordinary skill in the art to have made the kraft lignin of Hirai et al. using the process of Zetzl et al. The rationale to have done so would have been to remove the volatile organic compounds, including dimethyl disulfide, to reduce odors and to prevent environmental impacts. It would have been obvious to have reduced the volatile organic compounds to any amount greater than 99%, including reducing the amount of dimethyl disulfide to 2.5 ppm or less to remove any odors.
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.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/573930 (reference application).
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 material having kraft lignin with the dimthyl disulfide content claimed. The copending claims are a species of the pending claims, and therefore they render obvious the pending claims based on the anticipation analysis.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see Remarks, filed 3/2/2026, with respect to the 112(d) rejection and the rejections of claims 1 and 2 based on Hama et al. and Zappi et al. as primary references have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive.
Applicants argue there is no reason for combining Hirai and Zetzl because the printing odor problem was first discovered by applicants.
The Examiner respectfully disagrees and notes that Hirai et al. teach a thermosensitive recording medium having kraft lignin as a developer. One of ordinary skill would have looked for a way to prepare any of the materials of the thermosensitive recording medium, including the kraft lignin, in a more efficient manner and to reduce the presence of volatile organic compounds as this would be a desire to one having ordinary skill in the art. Zetzl teach methods of preparing kraft lignin that remove volatile organic compounds, reduce odors in the kraft lignin and to produce the lignin in a more efficient manner. Given the scope and content of the prior art, it would therefore have been obvious to have made the kraft lignin of Hirai using the process of Zetzl to reduce volatile organic compounds and to produce the lignin in a more efficient manner. Applicants are reminded that the rationale to combine the prior art does not have to be expressly stated in the prior art, but may be reasoned from knowledge generally available to one of ordinary skill, see MPEP 2144(I).
Applicants argue on pages 5-6 of their Remarks that Zetzl has a different use of kraft lignin than that of Hirai.
While Zetzl may have different specific uses mentioned, it is reasonably pertinent to Hirai in that both use kraft lignin in consumer applications. Applicants are reminded that according to MPEP 2141.01 (a), a reference may be relied on as a basis for rejection of an applicants’ invention if it is “reasonably pertinent to the particular problem with which the inventor is concerned.” A reasonably pertinent reference is further described as one which “even though it maybe in a different field of endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Zetzl is, therefore, a reasonably pertinent reference, because it teaches that a way to make kraft lignin that has reduced volatile organic compounds to reduce odors and prevent environmental impacts, which is a function especially pertinent to the invention at hand as well as that of Hirai.
Applicants argue on pages 7-8 of their Remarks that there are unexpected results for DMDS content being 2.5 ppm or less in the Tables 1 and 2 of the specification.
The Examiner respectfully disagrees and notes that applicants’ claims are not commensurate in scope with the evidence provided. The evidence in Tables 1 and 2 of the specification would provide unexpected results for 2.4 ppm or less, but there is no predictability as to the odor evaluation score at 2.5 ppm to greater than 2.4 ppm. As such, the arguments of unexpected results are not persuasive for the current scope of the claims.
Applicants argue on pages 8-9 that the double patenting rejection should be held in abeyance until an allowance is issued in this case or the copending case.
The Examiner respectfully disagrees and notes that he cannot hold the rejection in abeyance, nor can he withdraw the double patenting rejection to allow the case as this application and 18/573930 have the same effective filing date. This means the double patenting rejection needs to be maintained until it is overcome. Please see MPEP 804(I)(B)(1)(b)(ii).
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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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.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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