DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I and the species of the developer being the compound of formula (IV) in the reply filed on 9/30/2025 is acknowledged. This election reads on claims 1, 2, 4 and 8 because these are the claims where only the compound of formula (IV) is present, which is what the election of species mailed 8/12/2025 required, i.e. “any one compound or any one mixture”. The traversal is on the ground(s) that the species have overlapping structure that make a contribution over the prior art.
This is not found persuasive because at least the species of (III) and (IV) do not have overlapping structures as one is a sulfonylurea and the other is a sulfonamide, and the prior art within the Written opinion of the ISA shows that all of the technical features of claims 1-4 were known. The rationale for requiring an election of species in a national stage application via lack of unity is explained in MPEP 1893.03(d). In this section and in chapter 10 of the International Search and Preliminary Examination Guidelines, it is explained that “if it can be shown that at least one Markush alternative is not novel over the prior art, the question of unity of invention should be reconsidered by the examiner”. The Examiner has set forth in the restriction requirement how all of the technical features including at least one species were known in the prior art, which provides the rationale for saying that the species lack unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3, 5-7 and 9-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/30/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 4 and 8 are objected to because of the following informalities:
In claims 4 and 8, the phrase “formulae (IV) to (VI)” is objected to grammatically as there is no formula (V) in the claim. The objection can be overcome by changing the phrase to “formulae (IV) or (VI)” which is how the claims will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1, 2, 4 and 8 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 1 on lines 11-12, the phrase “(a compound represented by the following structural formula (V) is excluded)” renders the claim indefinite because it is unclear whether this limitation is required to meet the claim. The rejection can be overcome by changing the phrase to “, wherein a compound represented by the following structural formula (V) is excluded” which is how the claim will be interpreted.
In claim 1 on lines 17-20, the phrase “[where R1 and R2…different from each other]” renders the claim indefinite because it is unclear whether this limitation is required to meet the claim. The rejection can be overcome by changing the phrase to “where R1 and R2…different from each other” which is how the claim will be interpreted.
In claim 1 on lines 22-26, the phrase “[where X1 and X2…different from each other]” renders the claim indefinite because it is unclear whether this limitation is required to meet the claim. The rejection can be overcome by changing the phrase to “where X1 and X2…different from each other” which is how the claim will be interpreted.
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.
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 (variable one work-at-home day).
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