DETAILED ACTION
Response to Amendment
Applicant's amendment filed 3/10/2026 has been entered. Currently, claims 1-19 are pending and claims 3, 5-7 and 9-19 are withdrawn.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4 and 8 are 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 claims 1, 2, 4 and 8, 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 mixed with a color-developing agent such as NKK-1304, which reads on applicants’ formula (IV), on a support [0005], [0006], and [0008]. The isolated lignin can be mixed with the other color-developing agent at a ratio of 80/20-20/80 [0009]; 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.
Claims 1, 2, 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hirai et al. (JP 2020-104274), machine translation included, in view of Poukka et al. (WO 2021/123507).
With regard to claims 1, 2, 4 and 8, 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 mixed with a color-developing agent such as NKK-1304, which reads on applicants’ formula (IV), on a support [0005], [0006], and [0008]. The isolated lignin can be mixed with the other color-developing agent at a ratio of 80/20-20/80 [0009]; however, they do not specifically teach how the lignin was made or the dimethyl disulfide content of the lignin.
Poukka et al. teach a method for deodorizing kraft lignin by removing volatile organic compounds so that the lignin can be used in coatings in consumer-oriented applications [0009], [0014] and [0016]. Examples of these types of volatile organic compounds include dimethyl disulfide, which has an odor threshold value of 0.005 ppm [0010]-[0011]. Poukka et al. teach that they want to remove the volatile organic compounds to below their odor threshold value [0013].
Since Hirai et al. and Poukka 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 removing volatile compounds taught in Poukka 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 amount of dimethyl disulfide to less than its threshold value, i.e. 0.005 ppm, to remove any odors from said compound, which reads on the range claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 3/10/2026, with respect to the claim objections and the 112(b) rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive.
Applicants argue on page 9-10 of their Remarks that there is no reason for combining Hirai and Zetzl or Poukka 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 and Poukka 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 or Poukka 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 10-11 and 14-15 of their Remarks that Zetzl and Poukka have a different use of kraft lignin than that of Hirai.
While Zetzl and Poukka 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 and Poukka are, therefore, reasonably pertinent references, because they teach 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 12-13 and 15-16 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 4-7 of the specification only show results for 0.9, 2.2 and 2.8 ppm, but this would not lead to predictability as to the odor evaluation score at 2.5 ppm or less as claimed. Also, the evidence does not provide unexpected results for the full scope of developers of the groups C-1 to C-3 as only the developers B-1 to B-10 were tested. As such, the arguments of unexpected results are not persuasive for the current scope of the claims.
Conclusion
THIS ACTION IS MADE FINAL. 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
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